Interference No. 103,605
Matsushima suggest that the J1-J3 disclosures encompass a large
number of possible amino acid additions to mature hTNF. For
instance, Dr. Vehar testified that the number of possible
addition products suggested in Yamada’s Japanese priority
applications is greater than 1,000 (AR-00006, 00059-60, 00114-
115). Dr. Matsushima’s testimony suggests that the number of
possible addition products within the ambit of the combined J1-J3
disclosures is 78 (YR 00038-39, 00044-45, 00052-53). Yamada
specifically acknowledges that the effective teaching of the
three priority applications is that mature hTNF can be modified
by addition of from one to 78 amino acids from the precursor
portion, representing a group of 78 possible embodiments (YB-27).
More significantly, as aptly pointed out by Aggarwal
(AB 43-44), there is no specific disclosure in the Yamada
priority applications of at least the two amino acid adduct which
is particularly recited in part(b) of Yamada claim 1. Moreover,
none of those applications provide any direction, i.e.,
“blazemarks”, to guide a skilled artisan to select the two amino
acid adduct, in particular, from among at least 78 adducts
subsumed within the genus generally defined in those
applications. Yamada has simply failed to show otherwise. In
the absence of such blazemarks, merely describing a relatively
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