Appeal No. 1995-4400
Application 07/694,302
is inconsistent with this application naming four individuals as the inventors of monoclonal
antibody 720. The MTA appears to be designed as a business tool - to transfer proprietary
material from one entity to another - not as a means for identifying the inventors of the
material being transferred. Viewed another way, we know of no reason why any inventor of
material to be transferred needs to sign an MTA, as opposed to any person, be they an
inventor or non-inventor, who is authorized by the owner of the material to execute such a
document.
Accordingly, for these reasons, we find that examiner has not satisfied the initial
burden of establishing reasons of unpatentability of the claimed invention. The rejection is
reversed.
102(b)/103 over '90 MTA
There are two rejections and they both involve '90 MTA; one is over §102(b) and the
other is over §103. We will treat them together.
The facts are:
· On February 20, 1990, Risser, a non-inventor and recipient, signed and dated a
Material Transfer Agreement by which Chesebro, a co-inventor and who also signed
and dated the agreement (although the date is illegible), agreed "to transfer to [Risser]
the following Research Material: hybridoma cell lines 48 and 720" [only the transfer of
hybridoma cell line 720 is at issue here - see appellants' Brief p. 7];
· This application (07/694,302) was accorded a filing date of May 2, 1991, designating
Robertson, Chesebro, Miyazawa and Britt as co-inventors;
· On September 23, 1992, appellants filed a declaration by Thomas C. Mitchell (Paper
No. 13). Therein, Mitchell states that:
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