The United States Court of Appeals for the Federal Circuit has upheld a previous decision to deny the patent application US 8,822,509 filed by James F. Crish and Robert L. Eckert, which discloses the isolation and sequencing of the promoter sequence of human involucrin (hINV), a protein that interacts with keratin within epithelial cells.

Claims in the application that refer to a portion of the nucleotide sequence containing the promoter were rejected because they were deemed to be anticipated by two publications authored by Crish. Both papers used plasmids that contained an identical promoter region and one paper disclosed the complete structure of the promoter. However, according to the Apellants, because neither paper specifically disclosed the nucleotide sequence described in the patent application the papers were not prior art.

Identification and characterization of a prior-art material does not make it novel.

The board rejects this claim on the basis that the promoter region of hINV was specifically identified by size and location in the previous papers, and that the identification and characterization (that is, sequencing) of a prior-art material does not make it novel. Furthermore, because the plasmids used in both papers necessarily contain the sequence of interest, the Court of Appeals ruled that the pending claims are anticipated by the plasmid in the prior art, and that the Apellants have provided no evidence that the plasmids used in the patent application and the Crish publication were different.