PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 10 Unity of Invention
Alternative Forms of an Aspect of the Invention (Varying Solutions to the Same Problem)
Unity of Invention Exists - Examples 24 to 30
10.44 Example 24
Claim 1: A chair with a lifting mechanism.
Claim 2: A chair with a mechanical screw lifting mechanism.
Claim 3: A chair with a hydraulic lifting mechanism.
Unity exists a priori between claims 1, 2 and 3 because the special technical feature common to all the claims is a chair with a lifting mechanism. However, if a chair with a lifting mechanism is known in the art, there would not be a special technical feature common to all the claims and unity of invention would be lacking.
10.45 Example 25(A) (Common Structure)
Claim 1: A compound of the formula:
wherein R1 is selected from the group consisting of phenyl, pyridyl, thiazolyl, triazinyl, alkylthio, alkoxy, and methyl; R2-R4are hydroxyl, methyl, benzyl, or phenyl.
The compounds are useful as pharmaceuticals for the purpose of enhancing the capacity of the blood to absorb oxygen.
In this case, the indolyl moiety is the significant structural element that is shared by all of the alternatives. Since all the claimed compounds are alleged to possess the same utility, unity is present. This is consistent with "Markush practice" wherein a special technical feature is provided by a commonly shared structure which constitutes a structurally distinct portion in view of the prior art and the common structure is essential to the common property or activity (see paragraph 10.17).
Example 25(B) (Common Structure including a proviso in claim 1)
Claim 1: A compound of the formula:
wherein R1 is selected from the group consisting of phenyl, pyridyl, thiazolyl, triazinly, alkylthio, alkoxy, and methyl; R2-R4 are hydroxyl, methyl, benzyl, or phenyl with the proviso that R2 and R3 cannot both be methyl.
The compounds are useful as pharmaceuticals for the purpose of enhancing the capacity of the blood to absorb oxygen.
In this case, the indolyl moiety is the significant structural element that is shared by all of the alternatives. Since all the claimed compounds are alleged to possess the same utility, unity is present a priori. However, prior art that shows compounds having the same use and having this shared core structure could be used to show that this claim lacks unity of invention a posteriori. This prior art could even include prior art where both R2 and R3 are methyl since the prior art only needs to teach what is shared (i.e., the prior art does not need to anticipate/render obvious the claims).
Example 25(C) (Common Structure including a functional limitation in claim 1)
Claim 1: A compound of the formula (I) having the property of enhancing the capacity of the blood to absorb oxygen:
Formula (I)
wherein R1 is selected from the group consisting of phenyl, pyridyl, thiazolyl, triazinly, alkylthio, alkoxy, and methyl; R2-R4 are hydroxyl, methyl, benzyl, or phenyl.
In this case, the indolyl moiety is the significant structural element that is shared by all of the alternatives. Further, the specification and claims teach that all of the compounds of Formula (I) possess the claimed utility. Thus, unity is present a priori