Issue 228 | July 8, 2004
In re John Ngai and David Lin

In In re John Ngai and David Lin, No. 03-1524 (Fed. Cir. May 13, 2004), the federal circuit affirmed the Board抯 rejection of claim 19 of Ngai抯 �8 application based on prior art under �2(b).

Claim 19 of the �8 application is directed to a kit for amplifying and normalizing an RNA population. The only difference between the prior art kit and claim 19 of the �8 application was the addition of written instructions directing the user to employ the method of claim 1. Ngai et al. did not dispute that the prior art taught a kit comprising instructions and a certain buffer, but argued that the addition of the new printed matter to a known product made the product patentable. The board was unpersuaded.

Affirming the board抯 decision, the federal circuit distinguished claim 19 of the �8 patent from the facts of In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), wherein the court held 搕he printed matter would not achieve its educational purpose without the band, and the band without the printed matter would similarly be unable to produce the desired result.� Here, the court held that the printed matter and kit were not interrelated, and the printed material merely taught a new use for an existing product:

If we were to adopt Ngai抯 position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.

To view the full decision visit http://www.aplf.org/mailer/Issue228.doc

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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