Appeal No. 94-2742
Application 07/792,600
mRNA fragment is not a “nucleic acid sequence encoding a human polymerase " catalytic
polypeptide.” See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)
(PTO can require an applicant to establish that a prior art product does not necessarily
possess the characteristics of the claimed product when the prior art and claimed products
are identical or substantially identical.0 Appellants first argument that it is not clear that the
5.8 kb fragment “actually encodes the protein” is answered by Best. The Patent and
Trademark Office is not in a position to do the experimental work necessary to answer that
question in a factual manner. Rather, under the circumstances of this case, it is
reasonable to shift that burden to appellants.
As to appellants second argument that even if the 5.8 kb fragment encodes the
polymerase, identifying that fragment in a Northern blot does not constitute the isolation of
the sequences required by claim 1. Appellants rely upon a dictionary definition that
isolation means that the mRNA must be “in a free state.” Assuming arguendo that the
dictionary definition is relevant in citing this issue, appellants reliance upon that definition
leads to the next question, i.e., in a free state relative to what standard? It is commonly
used in patent prosecution, the phrase “purified and isolated” in reference nucleic acid
sequences or amino acid sequences is used to distinguish the claimed sequence from the
sequence as it appears in nature. In its broadest sense, then the phrase “purified and
isolated” as used in claim 1 merely means that the claimed nucleic acid sequence
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007