Prior art for US20140314679

Question

In reference to the patent: US20140314679

Would the following applications qualify as prior art for this?

• US20100240990

• CA2692570A1

Answer 1

I've down-voted vallismortis's answer because it falsely states that the claims of an earlier patent application are related to it's acting as prior art to a later patent application. When it comes to prior art, what matters is what a publications teaches as a whole. If the publication is a patent publication, that includes its full descriptions, claims, abstract, figures, title, etc. So if a prior patent publication as a whole teaches or suggests what is claimed in a later filed patent application, then it can be cited as prior art against the later application.

I also disagree with vallismortis's advice to "not be overly concerned about any of these applications...". Never underestimate the ability of a determined applicant to get a patent to issue on an important invention. They can change or modify the claims as many times as they want until they find something the examiner can agree on.

If you want to track what happens to this patent application, you can follow it at http://portal.uspto.gov/pair/PublicPair Type in the publication number and you can see if the claims have been rejected, what the prior art cited was and how the applicant has responded.

Answer 2

You need to compare the independent claims of the applications. Let's look at the independent claims of the earlier applications first:

US 20100240990 A1 and CA2692570 A1 were filed by the same inventors and have identical claims, which makes this analysis slightly easier. I will refer to these simply as 'the earlier application'.

Claim 1. A method of diagnosis and treatment of malignant tumours and comprising the steps of:

• locating an area containing lymph systems including sentinel lymph nodes and lymph ducts which drain the area around a tumour;
• injecting a magnetic particle-containing marker compound in the region around said tumour, said compound migrating into said sentinel lymph nodes and lymph system which drain the area around a tumour;
• making images of such area, by methods selected from the group comprising, X-ray, Ultrasound and the like, and identifying locations of sentinel lymph nodes therein;
• conducting biopsies of sentinel lymph nodes responding to said marker compound to determine the tumour status of such sentinel lymph nodes;
• operating to remove both the malignant tumour and tumour-invaded lymph nodes.

Claim 1 comprises injecting a magnetic particle-containing marker compound in the region around a tumor, where the compound migrates into surrounding sentinel lymph nodes.

Claim 12. A compound for marking sentinel lymph nodes in a drainage area around a malignant tumour and comprising; magnetic particles containing marker compound consists of Co+2, Co+3, Fe+2, Fe+3 and/or their oxides including magnetite [Fe(FeO2)2] and/or complexes with Mn, Zn, Cr, and a carrier.

US 20140314679 A1

Claim 1. A hypoosmotic suspension for medical injection comprising:

• about 13 mg/mL to about 200 mg/mL of magnetic particles;
• and an osmolyte selected from either about 0.01% w/v to about 0.6% w/v of an inorganic salt or about 0.5% w/v to about 1.5% w/v of a glycol.

Claim 1 is limited specifically to the composition of a hypoosmotic suspension of magnetic particles and an osmolyte.

Compare this to the description of the earlier application:

The suspensions can have about 13 mg/mL of magnetic particles, about 28 mg/mL of magnetic particles, 56 mg/ml of magnetic particles, 100 mg/ml of magnetic particles, 140 mg/ml of magnetic particles or about 200 mg/mL of magnetic particles.

The suspension can have an osmolality of about 80 mOsm/kg to about 160 mOsm/kg.

The exact formula is reproduced in the later application, and should certainly be considered Prior Art.

Claim 26. A method of locating a lymph node in a patient, the method comprising the steps of:

• providing a hypoosmotic suspension comprising magnetic particles;
• injecting the hypoosmotic suspension into the patient;
• and detecting a lymph node within 10 minutes of injection by detecting the location of the magnetic particles, the detecting sufficient to immediately begin a medical procedure on the lymph node based on the detecting.

Claim 26 is broader than Claim 1 of the earlier application because it does not specify the exact composition of the hypoosmotic suspension. It is also written more broadly than Claim 1 of the earlier application because it does not specify any of the following: the presence of a tumor, the location for injection, making images of an area containing lymph nodes, a biopsy or an operation. It is limited specifically to detecting a lymph node within 10 minutes using a hypoosmotic suspension containing magnetic particles. Therefore, Claim 1 of the earlier application should be considered Prior Art for Claim 26 of the later application.

In conclusion, given the independent claims and description of the earlier application, the independent claims of the later application are neither novel nor do they contain an inventive step.

That said, I wouldn't be overly concerned about any of these applications, since none of them have yet been granted. The examiners are usually pretty good about finding this material, and in the case of the later patent, I believe the claims are too broad to be considered novel even in the absence of the earlier applications.