Interference No. 103,203
Here, Edgington et al. filed a motion for judgment under 37 C.F.R. § 1.633(a) alleging that
the claims corresponding to the count in the involved ‘989 Application are unpatentable as
being based on a non-enabling disclosure. Paper No. 167, pp. 4-7 and 14-16. Thus, the
patentability of the Lawn et al. claims corresponding to the count depends upon whether
the teachings of the ‘989 Application would have enabled one skilled in the art to make
and use the claimed subject matter. The teachings of the benefit applications with respect
to the patentability under 35 U.S.C. § 112, first paragraph (enablement), of the claims
corresponding to the count in the involved ‘989 Application, are irrelevant. Reiffin v.
Microsoft Corp., 214 F.3d at 1346, 54 USPQ2d at 1918.
Turning to the involved ‘989 Application, we find that Lawn et al. disclose a
nucleotide sequence encoding human tissue factor. See, e.g., Figure 2 of the ‘989
Application. We further find that the Lawn et al. claims corresponding to the count, are
directed, inter alia, to a DNA sequence encoding mature tissue factor protein (e.g., claim
33), expression vectors encoding said DNA sequence (e.g., claim 35) and a host cell
transformed with said expression vectors (e.g., claim 13). We still further find that some of
the claims recite the nucleotide sequence of the DNA segment being claimed therein (e.g.,
claim 30). Given the disclosure of the complete and correct nucleotide
sequence encoding the tissue factor protein in the involved Lawn et al. application, it is not
clear to us, and Edgington et al. have not explained, why the involved ‘989 Application
would not have enabled one skilled in the art to make and use the invention described in
claims 9, 11 through 14, 30 and 32 through 38, corresponding to the count.
To the extent that Edgington et al.’s contention that the claims corresponding to the
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