Interference 102,728
opposition to identify any material fact in the motion which is in dispute. 37 C.F.R.
§ 1.638. It is not the responsibility of this Board to “pour over” a document to extract
the relevant information. Clintec Nutrition Co. v. Baxa Corp., 44 USPQ2d 1719, 1723
n.16 (N.D. 1997), citing United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991).
Rather, the burden was on Singh to demonstrate that the Brake 1 application fails to
satisfy the written description and/or enablement requirement(s) of § 112, first
paragraph. Nevertheless, for purposes of this review, we have interpreted Singh’s
arguments (1) and (2) as being directed to the issue of written description and
arguments (3) and (4), as being directed to the issue of enablement.
a. Written description
Singh does not seem to contest that Brake 1 (the ‘325 Application) describes a
DNA construct wherein the value of “n=0.” Paper No. 30, p. 5, lines 17-19; p. 6, lines
21-22, Dr. Falkinham’s Declaration, p. 3, para. 9. However, Singh argues that Brake 1
incorrectly designated the nucleotide sequence for human epidermal growth factor
(EGF). Paper No. 30, pp. 1-2 and 8-10. Singh points out that when Brake filed an
amendment to correct the sequence in the specification (Paper No. 6), the examiner
rejected all the pending claims on the grounds that the amendment to the specification
was “new matter” (Paper No. 7). Id., pp. 2-3. We find this argument lacks merit.
First and foremost, the relevant issue here is whether the ‘325 Application
satisfies the requirements of § 112, first paragraph, for the invention of the count. We
Thus, because this argument in the Opposition is not properly before us, it has not been
considered by the merits panel.
29
Page: Previous 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 Next
Last modified: November 3, 2007