Appeal No. 1995-4623
Application No. 07/918,588
to a fact situation arising under 35 U.S.C. § 102(f). Assuming arguendo, without deciding,
that the Katz analysis is here applicable, nevertheless, this case is distinguishable on its
facts.
As correctly pointed out by applicants (Appeal Brief, page 4), O'Connor does not
disclose how to prepare the peptides ctuf or ctuf . Nor does O'Connor disclose any2 4
experimental data respecting the biological activity of those peptides. Compare the
instant specification, pages 4 through 12, describing the preparation of
cyclo[Thr-Lys-Pro-Arg-Gly] and cyclo[Thr-Lys-Pro-Arg-Asp] and further describing the
details of a Phagocytosis Assay, a Thymidine Incorporation Assay, and a Tumor cell
Cytotoxicity Assay and the results of those assays using tuftsin and
cyclo[Thr-Lys-Pro-Arg-Gly]. It can be seen that the content of the O'Connor publication with
respect to the details of preparing and testing these two peptides is not coextensive with
the content of the instant application.
3
On these facts, which differ from those in Katz, we hold that co-authorship of
the O'Connor publication by two of the present inventors, (Fahad Al-Obeidi and
Montgomery Pettitt) and two others is not inconsistent with the named inventors in the
3In Katz, 687 F.2d at 453, 215 USPQ at 16, the court quoted from the Board opinion under review
and did not disturb the Board's finding that "[t]he Chiorazzi et al. article, as pointed out by the examiner and
as acknowledged by appellant, fully describes the presently claimed therapeutic immunosuppressive agent
and the method of preparing same."
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007