Interference No. 103,203
sufficient to enable one skilled in the art to make and use the invention described in the
claims corresponding to the count. Edgington et al. have not pointed to any evidence that
given the Lawn et al. disclosure, in its entirety, those skilled in the art would not have been
able to identify the signal sequence and the appropriate source of mRNA to make a cDNA
library. Fiers v. Revel, 984 F.2d at 1171-72, 25 USPQ2d at 1607 (Fed. Cir. 1993).
Accordingly, in view of the foregoing, we do not find that Edgington et al. have met
their burden of establishing that the teachings of the ‘989 Application would not have
enabled one skilled in the art to make and use the invention(s) described in claims 9, 11
through 14, 30 and 32 through 38, corresponding to the count.
Best mode
As to the failure of the ‘989 Application to disclose the best mode of making the
claimed invention, Edgington et al. argue that the scientific publications
cited in the benefit applications (e.g., 07/133,743 and 07/035,409), direct one skilled in the
art to extract tissue factor protein from cells, and not from the surrounding aqueous
medium. Paper No. 167, pp. 7-10. However, the examples in the specifications of the
benefit and involved ‘989 applications direct one skilled in the art to extract tissue factor
from the medium. Id., pp. 10-14. Edgington et al. contend that because the teachings in
the specification examples are inconsistent with the teachings of the references
incorporated therein, Lawn et al. have failed to disclose their known best mode. Id.,
pp. 17-18.
We find these arguments unconvincing.
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