Interference No. 103,203
First, we direct attention to our discussion, supra, that the burden is on Edgington et
al. to establish that the Lawn et al. co-inventors possessed a best mode for practicing the
claimed invention at the time their application was filed, and that the teachings of the
involved ‘989 Application fail to disclose Lawn et al.’s best mode of making and using the
subject matter described in the claims corresponding to the count. Reiffin v. Microsoft
Corp., 214 F.3d at 1346, 54 USPQ2d at 1918. For purposes of determining the
patentability of said claims under the first paragraph of § 112, the earlier-filed applications
are irrelevant.
Second, as to Edgington et al.’s argument with respect to the disclosure in the ‘989
Application to extract tissue factor protein from cells, we again direct attention to the
subject matter encompassed by claims 9, 11 through 14, 30 and 32 through 38,
corresponding to the count. Not one of said claims is directed to the human tissue factor
protein. It is well established, and recently reiterated by the court in Eli Lily & Co. v. Barr
Laboratories, __ F.3d ___, ___, 55 USPQ2d at 1616, “[i]t is concealment of the best
mode of practicing the claimed invention that section 112, ¶ 1 is designed to
prohibit.” Since all of the claims corresponding to Count 2 in the involved ‘989
Application are directed to a DNA sequence encoding human tissue factor, and since
Edgington et al. have not explained why the method of extracting the tissue factor protein is
necessary for one skilled in the art to carry out the best mode of making the claimed
invention, we do not find that they [Edgington et al.] have sustained their burden of
establishing that the Lawn et al. disclosure violates the best mode requirement of § 112,
first paragraph. Eli Lily & Co. v. Barr Laboratories, 2000 U.S. App. LEXIS at 19021, 55
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007