Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 According to Mr. Usami, (1) process of making claims “were not valuable in
2 terms of protection of pharmaceutical compounds” and (2) “claims of this type were not
3 considered patentable under the case law of the United States ***.” Usami declaration,
4 Paragraph 25.
5 The “were not valuable” portion of Mr. Usami’s testimony is apparently based on
6 his view that the § 271(g) protection now available was not then available in the United
7 States as Mr. Usami believes it was in Europe.
8 Since 1989, § 271(g) protection has been available in the United States; a person
9 infringes a patented process if the product made by the process is made abroad and the
10 product is imported into the United States during the life of the process patent.
11 While he does not say so in so many words, we believe Mr. Usami’s “were not
12 considered patentable” portion of his testimony is based on cases like In re Larsen,
13 292 F.2d 531, 130 USPQ 209 (CCPA 1961) and its progeny.
14 Mr. Usami recognizes that a case decided shortly after Larsen left open the
15 possibility that appropriate evidence in a particular case might provide a means for
16 overcoming In re Larson rejections of method claims, but says that he has no recollection
17 of having seen the case. The case is In re Ross, 305 F.2d 878, 134 USPQ 320 (CCPA
18 1962).
19 We understand that Mr. Usami is telling us that post Larsen it was not worth
20 pursuing “method of making” claims until § 271(g) protection became available in 1989.
21 Accordingly, if we are to believe Mr. Usami, and if we correctly understand what
22 he is trying to tell us, it was not until 1990, when the application which matured into
12
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