In re Qapsule Techs., Inc. United States Court of Appeals of the Federal Circuit, 2019 No. 2018-1772, 2019 WL 1110899

In this decision, the Federal Circuit affirms a Patent Trial and Appeal Board ("Board'') determination that claims reciting a "synthetic capsule construct'' comprising an enclosure made of recombinant "shell proteins,'' a recombinant "cargo protein,'' and a "bifunctional polynucleotide'' having the function of linking the cargo protein within the enclosure were inherently anticipated by prior art disclosing a recombinant influenza A virus. The applicant argued that the prior art reference does not inherently disclose the claimed invention because assembly of the prior art recombinant virus requires the presence of ribonucleoprotein in addition to the "bifunctional polynucleotide,'' i.e., the viral RNA, while the claimed synthetic capsule does not require ribonucleoprotein in order for binding to occur between shell proteins and the bifunctional polynucleotide. The Federal Circuit rejected this argument, pointing out that the claims use the open-ended transitional terms "comprising'' and "having,'' and thus do not exclude capsule assembly in the presence of ribonucleoproteins. The applicant also argued that unlike the prior art influenza virus, the claimed synthetic capsule is functionally different because it is non-infective and has utility in the chemical industry, but the Federal Circuit rejected this argument as well, noting that unclaimed functional distinctions or uses are insufficient to overcome anticipation.