Interference No. 103,203
which their sequence is based, (ii) states that “the cDNA clones appear to contain virtually
the entire 5' untranslated region of the message,” (iii) states that the insert encoding tissue
factor protein is approximately 1232 base pairs in length, (iv) the 5' end of the cDNA
sequence in Figures 2 and 3 is different from the sequence required by the Sal1 restriction
enzyme, and (v) the Nco1 restriction enzyme site shown in Figure 3 would result in a DNA
segment ending at base 1228, and not 1232. Id., pp.
5-6. Edgington et al. conclude that:
Proper written description of the invention defined by the Count [sic],
or by the claims designated as corresponding to the Count, is clearly lacking.
The involved LAWN ET AL. Application fails to meet the written description
requirement of 35 U.S.C. § 112, paragraph 1. Id., p. 9.
We find these arguments unpersuasive.
First, we point out that Edgington et al.’s argument with respect to the failure of the
involved Lawn et al. specification to provide a teaching of how to make a DNA segment
defined by the count is irrelevant. “The count of an interference is merely the vehicle for
contesting the priority of invention and determining what evidence is relevant to the issue of
priority.” In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1058-59 (Fed. Cir.
1993). Here, the relevant issue is whether the specification of the involved ‘989
Application provides an adequate written description of the subject matter encompassed
by the claims corresponding to the count. That is to say, the interference rules state that a
party may file a motion for judgment against an opponent on the ground that an opponent’s
claim(s) corresponding to the count are not patentable. 37 C.F.R. § 1.633(a). Since none
of Lawn et al.’s claims are identical to
the original Count 1, the involved application need not provide a written description of the
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