Key points
- This is an examination appeal.
- "The claim is for an isolated TRH receptor, i.e. a product. The claimed receptor is defined only by locational and functional features, i.e. the tissue from which it can be isolated: "from human CNS tissue" and its ability to bind the compounds defined in the claim"
- Claim 1 at issue: "An isolated TRH receptor subtype from human CNS tissue, the receptor displaying selective binding to a compound having the structure:- Glp-W-Pro-X [with further definition of X and W] wherein the compound having the structure Glp-W-Pro-X binds to the TRH receptor sub-type in human CNS tissues but does not bind to the TRH receptor sub-type in human pituitary tissue".
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"Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."
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"28. In the absence of any structural features, the claim cannot be considered as clear because it fails to "enable the protection conferred by the patent (or patent application) to be determined" (Id.) and it does not define the claimed subject-matter in a manner which allows a meaningful comparison with the state of the art to be made.Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."
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As a comment, see also recent decision T 1708/18 in an opposition case, where a patent was granted with a claim directed to: "An isolated antibody that binds specifically to the isolated polypeptide of SEQ ID NO:2 or SEQ ID NO:4". The patent in that case was granted in 2015.
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source http://justpatentlaw.blogspot.com/2023/03/t-256519-functionally-defined-receptor.html
