Interference No. 103,586
actual reduction to practice on March 6, 1990 based on the Roberts’ work.
Roberts testified that on March 6, 1990, he screened potential farnesyl inhibitors in
an assay. Roberts stated that he tested the inhibition of the farnesyl transferase activity of
porcine brain S-100 fraction on p21N aqueous sample in the presence of add SQ 34,183;
SQ Ras 1-14 peptide; SQ 34,868; and SQ 34,542 (a 13-mer peptide) in reactions
3
containing and [ H]FPP. (Exhibit 26, page 57). Roberts found that SQ 34,813 and SQ
Ras1-14 were >90% inhibitory to porcine brain S-100 farnesyl transferase activity and that
SQ 34,542 was inhibitory at . 1mg/ml. (Barbacid record, page 113-114, ¶ 20).
Opinion on Barbacid’s Actual Reduction to Practice
We hold, based on the record before us, that Barbacid have proven, by a
preponderance of the evidence, an actual reduction to practice of the count no later than
March 6, 1990 when SQ 34,813, SQ Ras 1-14 peptide and SQ 34,542 were found to have
farnesyl transferase inhibitor activity in the assay performed by Roberts.
IV.
Brown’s case for reduction to practice (Issue 2)
For reduction to practice, Brown rely upon the work done September, 11, 20 and
25, 1989 by coinventor Dr. Reiss (Reiss) (See Brown’s brief, pp. 31-32, (ii) Reduction to
practice), his laboratory notes (Exhibit 32, pages 18, 28-31 and 35-39) and for
corroboration, the testimony of Casey (AR, 19-20) to confirm farnesyl transferase (FT)
activity in the assay performed September 20 and the results of the experiment allegedly
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