Any lawyers want to help comment on the below. The main question is the final paragraph but the beginning is the background.
So in amrn facts and order page 145. It is stated “ Thus, in the Reasons for Allowance the Examiner maintained his view that, even if there was no prior art teaching administration of purified EPA to a patient population of 500 mg/dl or greater, prior art teaching administration of purified EPA to a patient population with “[e]ven a slight overlap in range” established prima facie obviousness.”
Therefore, it seems that the primary considerations were obvious after looking at the trials of TG<500 and were applied to the patent of TG>500 bc of the slight overlap in range which was acceptable. However, we were granted the patent bc of the secondary considerations.
““ Instead, the Examiner found the pending claims patentable because “Applicant was able to overcome the above 103 obviousness rejection by showing: 1 - Unexpected results, and 2 - Long felt unmet medical need.” See, e.g., PX 380 at 000010, Notice of Allowance at AMRN03059936. The Examiner then spent more than three pages specifically discussing the evidence of objective indicia supporting the Examiner's ultimate conclusion that the claims were patentable. See, e.g., id at 000010–13. “
Judge Du argues that our unexpected benefit of reduction of Apo-B was obvious after looking at Kurabayashi. A trial of Japanese women with no legitimate control group that doesn’t even have that statement in their conclusion. Regardless, because she disagrees with the unexpected benefit, ultimately she rules the marine patent was obvious.
What we need to do is get unexpected benefit back into the picture or add another secondary consideration. Obviously I would love to know what the original patent office thought of Kurabayashi because why is she all of a sudden bringing that into play with a different opinion than the original patent office.
-Does anyone have that information or can post?
More importantly, I would like to know HOW REDUCE IT WAS KEPT OUT of secondary consideration. If we rely on the wording of the original patent office that all the primary consideration trials were < 500 but can still be applied bc “[e]ven a slight overlap in range” established prima facie obviousness,” then why cant REDUCE IT be relevant in talking of TG>500 when the focus of the trial is <500 (just a slight overlap in range but close enough). Why are the defendents getting it both ways. We have to find a way to get REDUCE IT INCLUDED because that unexpected benefit will give us the win.
