Interference 102,728
record, we hold that a preponderance of the evidence establishes that the Brake 1
application constitutes an enabling disclosure of the invention of Count 1. Weil v. Fritz,
572 F.2d at 856, 865 n.16, 196 USPQ 600, 608 n.16 (CCPA 1978).
3. Singh’s Opposition
Singh’s Opposition (Paper No. 30) is not a model of clarity. For example, Singh
does not distinguish statements of fact from arguments as to why Brake’s preliminary
motion should be denied. See 37 C.F.R. § 1.638. See also, Paper No. 30, pp. 1-8,
section entitled “Facts and Reasons in Opposition.” As we understand it, Singh makes
four arguments (1)-(4). Specifically, Singh argues that the preliminary motion should
have been denied because
(1) Brake did not correctly identify the only fully disclosed gene in the application,
(2) Brake has failed to overcome the presumption that the revised sequences
which it tried to enter during the prosecution of the later abandoned original
Brake 1 application were new matter, (3) it had not been determined which other
genes might be operative at the time of the January 12, 1983 filing, and (4) the
original Brake application taught away from having n=0 such that there would be
no Glu-Ala sequences.” Paper No. 30, p. 8.
We point out, however, that Singh does not indicate whether these arguments
are directed to written description or enablement. In fact, the only mention Singh
makes of § 112, in the entire opposition, is in the discussion concerning Penwalt Corp
v. Akzon Inc., 740 F.2d 1573, 222 USPQ 833 (Fed. Cir. 1984), on p. 12 of the
Opposition. Enablement and undue experimentation are mentioned on p. 13 in the
discussion of Dr. Mullenbach’s testimony.20 We remind Singh that the rules require an
20 We direct attention to our discussion on p. 33, below, wherein, we find Singh’s
reliance on Dr. Mullenbach’s testimony from Interference No. 102,208, to be improper.
28
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