Interference 102,728
We find no reason to disbelieve Dr. Tekamp-Olson’s testimony; in fact, we find
her testimony credible and useful. The technique described in her testimony involves
digesting a DNA vector described in Brake 1 with known restriction enzymes (EcoRI
and HindIII), subjecting the digested DNA to limited digestion with another enzyme (Bal
31), digesting again with another restriction enzyme, adding linkers to insert the
digested DNA into a known vector, and screening for clones lacking the codons
encoding the glu-ala residues of the "-factor spacer sequence. Again, these appear to
have been routine procedures in genetic engineering and all these techniques, with the
exception of the Bal 31 digest, are described on pp. 12-15 of Brake 1. In fact, the only
aspect of this procedure which Singh challenges in its Opposition is the regulation of
the DNA digestion with the Bal 31 enzyme. Opposition, Paper No. 30, p. 14. However,
since Brake presents the Bal 31 digestion procedure as an alternative method of
making a species within the scope of the count, we need not reach this issue.
Accordingly, although we find no error in Dr. Tekamp-Olson’s statements in both the
declaration submitted to support Preliminary Motion (2) (Paper No. 15) as well as in the
declaration submitted to support Brake’s Reply to Singh’s Opposition (Paper No. 44),
we pass on the merits of the Bal 31 digestion procedure issue.
Nevertheless, in weighing the evidence as a whole, we hold that Brake has met
its burden of proving, by a preponderance of the evidence, that the ‘325 Application, in
combination with knowledge generally available in the art, would have enabled one
skilled in the art “to make and use” a DNA construct within the scope of the count
without undue experimentation at the time the application was filed. That is, on this
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