Looking at Patent Law: Patenting an Electrochemically Mediated Oxidation Reaction on Electrode Arrays–A Case Study

In this installment of the “Looking at Patent Law” series, we present a case study of the prosecution of U.S. Patent No. 7,507,837 directed towards “Process for Performing an Isolated Pd(II)-Mediated Oxidation Reaction” assigned to CombiMatrix Corporation of Mukilteo, Washington. This case was chosen to coincide with the focus of this issue of Interface on the Organic and Biological Electrochemistry (OBE) division of the Electrochemical Society (ECS). Notably, Prof. Kevin Moeller, a co-inventor on the subject patent, is a member-at-large of OBE. The case study begins with a brief synopsis of the background of the invention followed by 1) a discussion of the parent and child patent applications associated with the invention, 2) inventor assignment and power of attorney designations, 3) summary of office actions, 4) summary of applicant response to non-final rejection, and 5) allowance of the patent application. The case study discusses double patenting and the applicant’s response by filling a terminal disclaimer to traverse the rejection. With this case study, we hope to de-mystify the patent prosecution process and better prepare electrochemical and solid-state scientists, engineers and technologists to interact with their patent counsel regarding their inventions.