Interference No. 103,625
Turning to the ‘089 application, we find this application more complete in that
it sets forth proteins containing eight specific N-terminus amino acid sequences. Upon
comparing the sequences in the ‘089 application with that of LeMaire claim 1 (See Table
2, appendix), it can be readily seen that the ‘089 application does not disclose any amino
acid for positions 14, 15 and 16, those positions following the Arg whereas the LeMaire
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claims recites three additional amino acids, Leu Arg Glu . Hence, positions 14, 15 and 16
could be any amino acid.
While LeMaire acknowledge that the N-terminus amino acid sequences set
forth in the LeMaire patent claims are not specifically recited in the 072 application, they
argue that this is not fatal. LeMaire state “a subsequent clarification of or change in an
original disclosure does not necessarily make that originally [filed] disclosure fatally
defective” citing In re Nathan, 328 F.2d 1005, 1008, 140 USPQ 601, 603 (CCPA 1964); In
re Magerlein, 346 F.2d 609, 145 USPQ 683 (CCPA 1965); Riester v. Kendall, 159 F.2d
732, 734, 72 USPQ 481, 483 (CCPA 1947).
We disagree with LeMaire. What is fatal is that we find no description in the
‘072 application of a plurality of matching N terminus amino acid sequences as now
9 LeMaire, in their opposition paper to the Wallach motion 1a, erroneously
indicated that the ‘089 application disclosed a protein able to neutralize the action of TNF-
alpha having the following N-terminus amino acid sequence, Xaa-Thr-Pro-Tyr-Ala-Pro-Glu-
Pro-Gly-Ser-Thr-Cys-Arg-Leu-Arg-Glu, where Xaa is hydrogen, Phe, Ala-Phe, Val-Ala
Phe, Gln, Val Ala Phe, Ala Gln Val Ala Phe, Pro Ala Gln Val Ala Phe, Leu Pro Ala Gln Val
Ala Phe.
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