Interference No. 103,203
Burden of Proof
Nemerson et al. as a junior party whose application was copending with the
Edgington et al. and Lawn et al. applications, bears the burden of proving their case for
priority by a preponderance of the evidence. 37 C.F.R. § 1.657(b). Similarly, Edgington et
al. as a junior party whose application was copending with the Nemerson
et al. and Lawn et al. applications, must also prove their case for priority by a
preponderance of the evidence. Id.
All the parties agree that the case for priority in the present interference falls within
the doctrine of simultaneous conception and reduction to practice as set forth by our
appellate reviewing court in Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200,
1207, 18 USPQ2d 1016, 1021 (Fed. Cir.) cert. denied, 502 U.S. 856 (1991). Nemerson
Brief, pp. 34-36; Edgington Brief, Paper No. 128, pp. 23-26, Paper No. 346, pp. 24-28;
Lawn Brief, p. 100. Under this doctrine the court has found that with respect to a complex
chemical compound, such as a gene, “conception does not occur unless one has a mental
picture of the structure of the chemical, or is able to define it by its method of preparation,
its physical or chemical properties, or whatever characteristics sufficiently distinguish it. ...
[W]hen an inventor is unable to envision the detailed constitution of a gene so as to
distinguish it from other materials, as well as a method for obtaining it, conception has not
been achieved until reduction to practice has occurred, i.e., until after the gene has been
isolated.” Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d at 1207,18 USPQ2d at
1021 (Fed. Cir.), cert. denied, 502 U.S. 856 (1991).
Since Count 2 is directed to a DNA segment comprising a nucleotide sequence
coding for a human tissue factor protein from residue 1 to 263 of the amino acid sequence
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