Replies to post #359354 on Amarin Corp Plc (AMRN)

[ggwpq]

Alm, you made a great point regarding Du's two DEFINITE errors:

1) USPTO did not consider Kura which was patently false

2) Assume USPTO would rule that the ApoB patent be invalid if it had considered Kura which was also false because Du was looking at a cropped table in making such an assumption.

I wish Amarin had smarter legal representation.

[north40000]

One of the many questions you ask is one I can answer—more or less anyway.

Years ago, the PTO developed “prior art reference disclosure” forms. Using those forms enabled patent applicants to disclose all relevant/material prior art references the applicants were aware of that applicants believed might be considered important enough that the reference(s) should be disclosed to, or read by, the examiner before granting a patent on the claims in that application. Opposite each said reference was a box that examiners were instructed to check to indicate that the examiner was aware of that reference and, on consideration, it did not form a barrier to grant of a patent.

Examiners were also instructed to close the prosecution history by providing Reasons for Allowance of the patent claims in light of the main prior art considered and discussed by the examiner and applicants during prosecution.

Some ambiguity ensued from those forms when looked at by courts in subsequent litigation of applications and/or patents whose prosecution history contained said forms.

Particularly troublesome were applications or patents that contained tens of pages of forms having as many as 10-30 prior art references/page, all checked off as having been considered by the examiner but perhaps not discussed in a particular manner that was later raised. One question arose—was the Examiner really aware of every page of every 1-100 page reference cited and checked off in that many page disclosure form? When that question was raised, most courts have given deference to PTO decisions granting patents in such circumstances. A few courts have not deferred.

An extreme example. I was assigned to represent the PTO in a CCPA appeal of a Board decision affirming a rejection of claims by the PTO under 35 USC 103. I was not impressed by the references relied on by either the examiner or the Board. The application claims involved semiconductor chips placed on a glass substrate. A Journal of Applied Physics article, cited on the form but not discussed by the Board or examiner, disclosed placing said chips on a quartz substrate. Applicants’ appellate attorney in the CCPA agreed the Journal article was evidence that the application claims were not directed to even new subject matter, abandoned the application, and withdrew the appeal.