Interference No. 103,203
Starting with the latter issue, we find Edgington et al.’s reliance on various
statements within Lawn et al. Application 07/013,743, to establish lack of written
descriptive support, to be misdirected. We point out that said application discloses an
isolated DNA segment encoding amino acids 1 to 263 of the human tissue factor protein,
as required by Count 2. See, Application 07/013,743, Figure 2a. Accordingly, contrary to
Edgington et al.’s argument, we find that the Lawn et al. disclosure of a complete and
correct DNA sequence which encodes the mature tissue factor protein provides an
adequate written description of subject matter within the scope of Count 2. University of
California v. Eli Lilly and Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir.
1997); Fiers v. Revel, 984 F.2d 1164, 1170-71, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993).
As to the best mode issue, we point out that Edgington et al. must establish that (i)
at the time of filing their earlier applications, the Lawn et al. co-inventors possessed a best
mode of practicing a species within the scope of the count, and (ii) the Lawn et al. benefit
applications would not have enabled one skilled in the art to practice the best mode. Cf.
Eli Lily & Co. v. Barr Laboratories Inc., __ F.3d ___, ___, 55 USPQ2d 1609, 1614 (Fed.
Cir 2000); Chemcast Corp. v. Arco Indus. Corp., 913 F.2d at 927-28, 16 USPQ2d at
1036-37. Here, we do not find that Edgington et al. have even begun to explain how the
difference in the number of pages in each “Version” of the specification, and the alleged
difference in the determination of the biological activity of the tissue factor protein,
demonstrate that Lawn et al. knew of a better mode of making a DNA sequence encoding
mature tissue factor. Nor have Edgington et al. explained
how given the disclosure of a DNA segment comprising a correct nucleotide sequence
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