Appeal No. 94-3676
Application 07/949,327
Functional Polypeptides,” Molecular and Cellular Biology, Vol.
5, No. 4, pp. 768-779 (Apr. 1985), which was published in
1985, (2) Leung, “The Structure and Bacterial Expression of
Three Distinct Bovine Interferon-J Genes,” Bio/Technology,
Vol. 2, pp. 458-464 (1984), which was published in 1984, and
(3) Higashi, “Structure and Expression of a Cloned cDNA for
Mouse Interferon-J,” J. Biol. Chem., Vol. 258, pp. 9522-9529
(1983), cited in Leung, which was published in 1983, are5
intervening publications. To perfect their claim for priority
under 35 U.S.C. § 120 and antedate the teachings of the
aforementioned intervening publications, the specification of
Application 06/438,128, filed November 1, 1982, must describe
and enable one skilled in the art to make and use the full
scope of the subject matter presently claimed. See
In re Scheiber, 587 F.2d 59, 62, 199 USPQ 782, 784 (CCPA
1978):
Section 120 . . . concerns only an applicant’s effective
filing date . . . and it expressly requires an earlier
application to disclose the claimed subject matter in
compliance with 35 U.S.C. § 112, first paragraph.
5 We have not actually retrieved the Higashi article.
However, we are so excited by its title that we recommend that
the examiner retrieve the article and consider the patentability
of the subject matter claimed in this case over its teaching.
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