navigating the patent maze

When it comes to patentability, my working theory is "the most damaging prior art is your own."  It makes sense though - whose work is more like your own than your own?  Dr Crish fell victim this way and lost his chance for a patent as a result (In re Crish, Fed. Cir., No. 04-1075, 12/21/04). 

The patent application claimed purified DNA molecules having promoter activity for the human involucrin gene (hINV).  Involucrin is a protein that interacts with keratin along with other intracellular proteins to form a cross-linked structure within dead cells and strengthens the plasma membrane.  Skin cells, which are mostly dead cells, benefit from this.  The hINV promoter was sequenced from a plasmid that was the subject of an article authored by Dr Crish and others. 

Crish tried to distinguish the claims from the damaging effect of his publication first by asserting that the rejected claims did not encompass the whole plasmid, and second, by asserting that the publication did not disclose any nucleotide sequence of the promoter.  The Court did not buy either of these arguments because (1) the use of "comprising" in the claim language meant that the whole plasmid was encompassed by the claim, and (2) the sequence conferred indentification and characterization of a prior art material and "one cannot establish novelty by claiming a known material by its properties." 

The following shows how I think Crish could have successfully claimed the promoter sequence. 

Rejected claim: 

A purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO: 1 [2.5 kb of sequence of the hINV promoter], wherein said portion consists of the nucleotide sequence from 1141 to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO: 1 has promoter activity.

Proposed claim:

A purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO: 1, wherein said portion consists of the nucleotide sequence from 1141 to 2473 of SEQ ID NO:1, in operative linkage with a foreign gene sequence, and wherein said portion of the nucleotide sequence of SEQ ID NO: 1 has promoter activity.