However, many of the monoclonal antibodies we have raised have had
low affinities, giving assays of poor sensitivity.
E67, p. 16. Thus, one having ordinary skill in the art repeating Engvall’s example 1, would not
always and necessarily obtain high affinity antibodies.
Langone’s third opinion, based on the sensitivity of the assay in Engvall’s example 1 and that
the affinities of both antibodies have to be about the same, is also contradicted. As we indicated
above, Langone’s calculation of the affinity based on the sensitivity of the assay is speculative. In
addition the enhanced affinity effect of carrier-bound antibodies indicates that the affinity of both
antibodies do not necessarily have to be the same to obtain a sensitive assay.
Accordingly, a preponderance of the evidence supports a finding that the minimum value for
the affinity constant set out in Engvall’s claims 8 to 27 is not inherent in Engvall’s example 1.
Engvall’s claims 8 to 27 are not, therefore, supported by a written description and are unpatentable
to Engvall under 35 U.S.C. § 112, ¶ 1.
III. Priority
A. The burden and standard of proof
As the junior party, Engvall bares the burden of proof on the issue of priority. Bosies v.
Benedict, 27 F.3d 539, 541, 30 USPQ2d 1862, 1863 (Fed. Cir. 1994); Oka v. Youssefyeh, 849 F.2d
581, 584, 7 USPQ2d 1169, 1172 (Fed. Cir. 1988). “It is well settled that where an interference is
between a patent that issued on an application that was copending with an interfering application, the
applicable standard of proof is preponderance of the evidence.” Bosies, 27 F.3d at 541-42, 30
USPQ2d at 1864, see also Peeler v. Miller, 535 F.2d 647, 651 n.5, 190 USPQ 117, 120 n.5 (CCPA
1976); Linkow v. Linkow, 517 F.2d 1370, 1373, 186 USPQ 223, 225 (CCPA 1975); Frilette v.
Kimberlin, 412 F.2d 1390, 1391, 162 USPQ 148, 149 (CCPA 1969), cert. denied, 396 U.S. 1002
(1970). Where the junior party copies claims from a patent to provoke an interference the standard
of proof is clear and convincing evidence where the patent issued before the junior party filed the
application. Price v. Symsek, 988 F.2d 1187, 1190-91, 26 USPQ2d 103, 1036 (Fed. Cir. 1993).
David’s patent issued on March 8, 1983. Engvall’s involved application was filed on October
6, 1983. In a preliminary amendment to that application Engvall copied claims from David’s patent
to provoke an interference. Engvall Application 06/539,754, Paper 18. So Engvall’s involved
39
Page: Previous 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 Next
Last modified: November 3, 2007