Interference No. 103,586
activity” in the assay prior to filing their application. Brown arrive at this position after
noting that Manne and Barbacid and others authored a manuscript, later published in
October, 1990, in vol. 87 of the PNAS, pp. 7541-7545, which identified the use of a
specific tetradecapeptide (Tyr-Ser-Gly-Pro-Ser-Met-Ser-Ser-Lys-Cys-Val-Leu-Ser) as a
test substance found to block in vitro farnesylation of p21N. Brown posits that because a
test substance is a recited element in the instant claims, and test substance(s) had to been
known, it necessarily follows that Barbacid contemplated at least one of these tested
substances as the best inhibitor and Barbacid‘s failure to disclose “the test substance
known to applicant at the time of filing to be the best inhibitor” is a violation of the best
mode (brief, page 71)
We have carefully reviewed the Brown motion and find that Brown has not
established that Barbacid at the time of filing his application, had a preferred embodiment
for carrying out his screening assay. On this record, Brown has not established that
Barbacid knowingly withheld information regarding the best way to practice the claimed
process. Absent evidence of accidental or actual concealment by applicant, a rejection for
failure to provide the best mode cannot be sustained. In re Sherwood, 613 F.2d 809, 204
USPQ 537 (CCPA 1980). Hence, we hold that Brown have not sustained their burden of
proof.
Initially we note that Brown’s argument regarding the use of a tetradecapeptide as a
test substance has not been raised by Brown in their brief. Accordingly, that argument is
-25-
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007