Adding linking claim to defeat species restriction

Question

The invention is a method and composition to treat a medical condition — a CIP with 20 claims initially. The examiner has required election between the method and composition claims, and election between six species (A-F). I will choose the method claims without traverse and species A with traverse. The broadest method claim reads like the following:

1. A method for treating (a specific disease) in a subject, comprising: (a) supplying a promoter of A; (b) supplying a promoter of B; and (c) supplying a promoter of C; whereby (specific things happen and the disease is reversed).

There is nothing patentable about A, B, or C individually, but these three elements work together. A by itself does not treat the disease permanently, but it does with B, and C doubles the response. No one previously knew how A actually worked, so the combination was never made. But as A, B and C are each listed as Markush groups in the dependent claims, some with substantially different chemical properties, the examiner is apparently now entitled to require restriction. But how she could determine patentability based on examining only one element is beyond me. I thought of adding a new independent claim that will eliminate the Markush groups—

21. (New) A method for treating (a specific disease) in a subject, comprising: (a) supplying a [specific promoter of A]; and (b) supplying a [specific moiety of B]; whereby (specific things happen and the disease is reversed).

Adding specificity and eliminating one element. I had not done this before as this claim without (c) exists in the parent application, and has languished for more than 2 years with no examiner assigned to it. But does this get me anything? It would certainly simplify the searching.

Answer 1

Narrowing claims will make searching easier and increase the chance of getting an allowance. By picking a specific "promoter" of A and another of B, I assume you are making an election.

If the chemical properties of long lists of A items, for example, are very different from each other you will have a hard timing grouping them in a Markush group. One approach is to have one independent claim be a "step for" claim that does not specify the chemicals, i.e. "step for promoting A". This assumes the chemicals are listed in the specification as chemicals for promoting A, B, and C.

You may know that, in the U.S., method claims can not be enforced against a doctor, nurse or other medical professional or hospital. See

(1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b), the provisions of sections 281, 283, 284, and 285 shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

It does not apply to the use of a patented machine or a patented medicine or to something involving a biotechnology patent. I have no idea if your method claim would fall under that provision or not. It would require a study of case law and maybe legislative intent.

You can go after an entity that packages A and B together and markets them as a treatment for X. The medical professional who carried out the method step would be a direct infringer (but shielded from enforcement) and the packager/marketer would be an indirect infringer whom you can enforce against.

In considering this you should look hard at "supplying" in the context of the specification. If it means supplying to the doctor's office and they order the A promoter from one supplier and the B promoter from a different supplier then no single entity is doing all steps of the method and the claim is not infringed.

And the question of the body doesn't seem the same as the question of the title.