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

Complementary Forms of the Invention (e.g. Receiver and Transmitter)

Unity of Invention Exists – Examples 21 and 22

10.41  Example 21: (Claims in the Same Category)

Claim 1:  Plug characterized by feature A.

Claim 2:  Socket characterized by corresponding feature A.

Feature A is a special technical feature that is included in both claims 1 and 2 and therefore unity is present.

10.42  Example 22: (Claims in the Same Category)

Claim 1:  Transmitter provided with time axis expander for video signals.

Claim 2:  Receiver provided with time axis compressor for video signals received.

Claim 3:  Transmission equipment for video signals comprising a transmitter provided with time axis expander for video signals and a receiver provided with time axis compressor for video signals received.

The special technical features are, in claim 1 the time axis expander, and in claim 2 the time axis compressor, which are corresponding technical features.  Unity exists between claims 1 and 2.  Claim 3 includes both special technical features and has unity with claims 1 and 2.  The requirement for unity would still be met in the absence of the combination claim (claim 3).

No Unity of Invention (a priori) – Example 23

10.43  Example 23  (Method of Screening and Compounds Identified by the Method)

Claim 1:  A method to identify compounds that are antagonists of receptor R comprising the steps of contacting cells expressing on their outer membrane receptor R with its natural ligand; observing the binding of the ligand;  contacting said cells bound to said ligand with a candidate compound selected from a library of compounds; and observing any change in the binding of the ligand.

Claim 2:  Compound X, having formula 1.

Claim 3:  Compound Y, having formula 2.

Claim 4:  Compound Z, having formula 3.

Receptor R and its natural ligand are proposed as a drug target.  Compounds that antagonize receptor R are proposed to have physiological effects that may be useful in therapeutic treatment.  The aim is to identify lead compounds as a basis for further screening and testing of combinatorial libraries.  A library is described as providing many possible structurally different compounds.  Examples show that the method of claim 1 can be used to identify compounds affecting the physiological effect of binding of the natural ligand to the receptor.  Only compounds X, Y and Z were shown to have such effects, but they do not appear to share a significant structural element.  The description is silent with regard to both the relationship between the structure and activity of the claimed compounds and the relationship between the structure of receptor R and the structure of the compounds.

Receptor R, its biological function, and its natural ligand are known in the prior art.  No compounds that function as antagonists of receptor R are known. 

The technical feature of method claim 1 resides in the step of observing the effect of the candidate compounds on ligand binding in a screening assay.  Neither the same nor a corresponding special technical feature is present in any of compounds X, Y, or Z.  No manufacturing relationship exists between the screening method and the claimed compounds.  Further, the screening method is not a method of using claimed compounds X, Y, and Z.  In the absence of any teaching as to the structure required for a compound to act as a receptor R antagonist, there is no single general concept that links the method to the claimed compounds. Thus, unity of invention is lacking (a priori).

Compounds X, Y, and Z would be regarded as having the same or corresponding technical feature if they had a common property or activity, and shared a significant structural element that is essential to the common property or activity.  While compounds X, Y, and Z do share the common property of antagonizing receptor R, there is no teaching as to a shared significant structural element, and hence, there is no disclosure of the same or corresponding technical feature.

One possible grouping would be:

            Invention 1:  Method to identify compounds... (claim 1)

            Invention 2:  Compound X (claim 2)

            Invention 3:  Compound Y (claim 3)

            Invention 4:  Compound Z (claim 4)