Interference No. 103,203
during which they received information about the nucleotide sequence from Dr. Bach.
Evidence of an actual reduction to practice must be to a specific point in time. Revise and
Caesar, Vol I, § 152, p. 490. Second, it is not clear to us, and Dr. Bloem does not explain,
what is meant by “no significant gaps” in the remaining nucleotide sequence. In our view,
gaps in the nucleotide sequence indicate that Nemerson et al. were not in possession of a
nucleotide sequence within the scope of the count on February 3, 1987. Third, neither Dr.
Bloem nor Dr. Lin provide first-hand knowledge of the nucleotide sequence data available
on February 3, 1987. Thus, their testimony adds little to the testimony of Dr. Bach in
establishing an actual reduction to practice of a species within the scope of the count by
the critical date; i.e., by February 3, 1987.
Finally, we note that Dr. Nemerson testifies that
On February 3, 1987, I sent a letter to Rochelle K. Seide (MS&Y 6723)
reflecting that, prior to that date, we had determined the entire coding sequence of
the human tissue factor clone [NR 2873, para. 18].
However, Dr. Nemerson is a co-inventor, and as discussed above, independent
corroboration is needed. Price v. Symsek, 988 F.2d at 1195, 26 USPQ2d at 1037; Hahn
v. Wong, 892 F.2d at 1032-33, 13 USPQ2d at 1317. Moreover, a letter sent by a co-
inventor stating what he has done does not constitute independent corroboration of his
work or circumstantial evidence independent of the inventors. To the contrary, the
letter is merely Dr. Nemerson’s statement as to what he had done and, thus, it is self-
serving.
In view of the foregoing, it is our judgment that the Nemerson et al. record fails to
prove, by a preponderance of the evidence, that they were in possession of a complete
and correct nucleotide sequence encoding a human tissue factor protein having an amino
50
Page: Previous 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 Next
Last modified: November 3, 2007