Interference No. 103,056
claims 22 and 23 are directed to 1,4,7,10-tetraazacyclododecane-1,4,5,10 tetraacetic
acid bifunctional coupling agents wherein the L-E group is attached to the N of the
tetraacetic acid chelating derivative. Dean et al., in their motion, alleged that claim 8
defines a separate patentable invention because cleavable linkers were unknown.
Parker et al. correctly points out that Dean et al. did not present any arguments that
claim 8 defined a separate patentable invention independently from his arguments
concerning claims 6, 7, 16, 18 and 19 and 22 corresponding to the count or any
evidence specific to the subject matter of claim 8. Further, Parker et al. correctly points
out that Dean et al. made no specific arguments as to claims 22 and 23. In rebuttal to
the motion, Parker et al. did offer evidence supported by the Yarrenton declaration to
show broadly that indeed cleavable linkers were known in this art (Meares, Haseman
and EP-A2-0175617) and that attaching an L-E group to the N atom of a macrocycle
was also known (Australian patent AU-A-76217/87).
Therefore, we find that Dean et al., the movant who had the initial burden, failed
to sustain their burden to show that their patent and reissue claims 8, 22 and 23 do not
define the same patentable invention as any other claim designated in the notice
declaring the interference as corresponding to the count. See 37 CFR § 1.637(c)(4)(ii)
(1985). In view of our finding, we conclude that the APJ erred in granting the
Dean et al. 37 CFR § 1.633(c)(4) motion to undesignate claims 8, 22 and 23 as not
corresponding to count 2. The final decision of August 20, 1998 is modified to reflect
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