Truthbythought - When I was about 8 years old my 2 brothers and I slipped away at dusk to go ice skating on the Mississippi River. It was against our parents stern warnings. We skated out with the idea of going all the way across. But far from shore we heard the ice start to give way - the big river was readying itself to swallow us up. That is about the same feeling I have in trying to answer this question. I had no business on the river at that time and I probably have no business in tackling this question.
That said, it is a question I've been poking around at for a couple of days myself. My biggest reassurance is the team we have pursuing this. Also, it is very important that the prior art referenced but one of 24 claims.
I've also been poking around in the Manual of Patent Examining Procedures, Eight Edition, Revision (August 2012), where I find many reasons that everything could be just fine. It would take the education of a patent attorney and review of many cases to feel totally comfortable. For what it is worth, here are a few of the concepts from the manual, which provide me with some reassurance, albeit from the viewpoint of a complete novice.
Broad leeway to the applicant:
"During patent examination, the pending claim must be given their broadest reasonable interpretation consistent with the specification."
Inherency:
" The fact a certain result or characteristic MAY occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic."
In reference to inherency the old patent stated ..."the compounds may also be used in the treatment or prevention of psoriasis." I believe that was the only reference to psoriasis in the entire document.
Derivation:
"The mere fact that a claim recites the use of various components, each of which can be argumentatively assumed to be old , does not provide a proper basis for a rejection. Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that one charged with derivation possessed knowledge of the invention. Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention."
On the issue of derivation, virtually the entire old patent is directed toward HIV, herpes etc., not psoriasis.
Obviousness:
"Presence or absence of Prior Art suggestion of method of making
a claimed compound may be irrelevant in determining Prima Facie Obviousness. If the prior art fails to disclose or render obvious a method of making a claimed compound, at the the time the invention was made, it may not be legally concluded that the compound itself is in possession of the public."
On the obviousness issue - the prior patent is pretty oblique on Psoriasis. If the compound existed we wouldn't be having this conversation.
Enabling:
"In Enzo Biochem, Inc. V.Calgene, the court held that claims in two patents directed to genetic antisense technology, were invalid because the breadth of enablement was not commensurate in scope with the claims."
" All questions of enablement are evaluated against the claimed subject matter. The focus of the examination inquiry is whether everything within the scope of the claim is enabled."
There are many enablement cases both in favor and against the applicant. But it seems to me the psoriasis claim of the old patent was never pursued. Overly broad patents appear to be viewed with skepticism as I feel they should be. In other words, if you say something you need to bring it about.
To my untrained eye, Prurisol is a unique formulation that passed muster on 23 of its claims. It would seem there is a good chance to argue the 24th on some of the issues above and maybe more. A good patent attorney might make the case.
Hope that helps. But man, I better get back to shore. What is that crack in the ice running right between my skates? Time to split.
