Interference No. 103,203
Konigsberg say Dr. Spicer did. Id., pp. 2-3. We find these arguments lack merit.
We have carefully reviewed the referenced documents and find them to be in
compliance with 37 C.F.R. § 1.48(a). In addition, we agree with Nemerson et al. that the
declarations are not inconsistent. Rather, they indicate that Dr. Spicer worked in
collaboration with Drs. Nemerson and Konigsberg. Accordingly, the motion is granted.
(5)(6)(7) Nemerson et al.’s preliminary motions for judgment on the grounds that (i)
Edgington et al.’s claims corresponding to the count are unpatentable under
35 U.S.C. § 112, first paragraph, (ii) Edgington et al. committed fraud and inequitable
conduct before the PTO, and (iii) Edgington et al. improperly failed to name Dr. Nemerson
as a co-inventor, are DISMISSED AS MOOT in view our final decision, infra.
(8) Edgington et al.’s Preliminary Motion 3 for judgment stating that Lawn et al.’s
claims which correspond to the count are unpatentable because the specification fails to
satisfy the written description requirement of 35 U.S.C. § 112, first paragraph, is DENIED.
The burden is on Edgington et al., as the moving party, to prove by a
preponderance of the evidence, that the claims in the involved Lawn et al. application fail to
satisfy the requirements of 35 U.S.C. § 112, first paragraph. 37 C.F.R.
§ 1.637(a). This, they have not done.
Here, Edgington et al. allege that neither the involved Lawn et al. Application
08/437,989 (‘989 Application) nor the scientific literature incorporated therein, contain a
teaching of how to make a DNA segment defined by Count 1 which is directed to
“[a]n isolated DNA segment comprising no more than about 1133 nucleotide base pairs ...
.” Paper No. 166, pp. 2-4. In addition, Edgington et al. contend, inter alia, that the Lawn et
al. ’989 Application (i) does not specify with particularity the length of the cDNA clone on
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