Interference No. 103,203
13
skilled in the art to practice the claimed [sic] invention. Edgington Brief, Paper No. 347,
p. 36. Edgington et al. contend that
the contradictory information about constructing a library (Fact Statement 48), the
lack of deposits or commercial availability of expression vectors (Fact Statements
43 and 44), the large number of vectors that would have to be manipulated to
produce the vectors described in the specification, and the fictional mode disclosed
for expression and purification of recombinant tissue factor protein lead to only one
conclusion -- that the invention as described and claimed is not enabled by the
specifications of the aforesaid early Lawn et al. applications. Id., p. 37.
We find these arguments unpersuasive.
First, we note that Edgington et al. have not pointed to any evidence which
establishes that the teachings of the earlier-filed Lawn et al. applications would not have
enabled those skilled in the art to make and use an invention within the scope of
the count. That is, Edgington et al. have not pointed out any evidence which demonstrates
that in view of the teachings of the ‘743 Application, it would have required undue
experimentation for one skilled in the art to make and use a species within the scope of
Count 2. Rather, on this record, all we have is attorney argument as to what the Lawn et al.
parent applications disclose and why such disclosure is not sufficient to satisfy the
13In their arguments with respect to whether the earlier-filed Lawn et al. applications satisfy the
requirements of 35 U.S.C. § 112, first paragraph (enablement and best mode), it appears that Edgington et
al. have confused two concepts. That is, Edgington et al. appear to argue that the earlier-filed Lawn et al.
applications do not satisfy the requirements of § 112, first paragraph, with respect to the claimed invention.
See, e.g., Paper No. 347, p. 35 (“one skilled in the art at the time the invention was allegedly made, i.e., in
early 1987, would not have been able to practice the claimed invention based on the teachings of the
specification” [emphasis added]). We point out that the issue here is priority. Thus, the earlier-filed
applications must satisfy § 112, first paragraph, for a species within the count in order for Lawn et al. to be
accorded the benefit of their filing date. Accordingly, we have interpreted Edgington et al.’s arguments as
meaning that the earlier-filed Lawn et al. applications fail to enable one skilled in the art to make and use a
species within the scope of the count.
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