Interference No. 102,572
USPQ at 299; Amgen, 927 F.2d at 1217, 18 USPQ2d at 1021; and Colbert, 21 USPQ2d
at 1071. If after the claimed conception date extensive research was found necessary
before achieving minimum satisfactory performance obviously the mental embodiment of
that date was a mere hope or expectation, a statement of a problem, but not an inventive
conception Alpert, supra.
We agree with Boss et al. that on the record before us, this case is one where
conception and reduction to practice must be concurrent. The record shows that by March
25, 1983 it was known, at least theoretically, that the recombinant DNA approach may be
applied to the production of any heterologous polypeptide or protein in a suitable host cell,
provided that appropriate DNA coding sequences can be identified and used to transform
the host cell. And that indeed a number of heterologous protein were produced by
bacteria however all of these were single chain polypeptides or proteins. (Boss et al.
patent col. 1, lines 15-65) Thus the construction of plasmids, the transformation of cells and
expression of single chain genes in a single cell were routine. However, there is no
evidence that immunoglobulins, multiple chains proteins, had been produced by
recombinant DNA techniques from a single host cell prior to March 25, 1983. (See Boss
et al. patent, column 1).
Rather the evidence of record establishes that Riggs had but a research plan. He
testified that he intended “to explore the possibility of producing antibodies in bacteria.”
and suggested that “a single bacterial strain could be constructed which contained both
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