Interference 102,728
this instance since Brake 1 discloses the nucleotide sequence. Tekamp-Olson
Declaration 2, p. 4, para. 6c. One skilled in the art need only compare manually, or
using a known computer program, the disclosed EGF nucleotide sequence with the
known amino acid sequence to correct the alignment. Johnson Declaration, pp. 6-7;
Tekamp-Olson Declaration 2, p. 4, para. 6b.
Singh argues that (i) one skilled in the art would not have recognized the
nucleotide sequence in Brake 1 as EGF and would not have tried “to find two
complementary sequences in what appeared to be a single 5' to 3' strand” (Singh
Opposition, Paper No. 30, p. 9); (ii) because Brake filed a continuation-in-part (CIP) of
Brake 1 which contained the amended EGF nucleotide sequence, Brake is estopped
from arguing that the new information in the second application was inherent in Brake 1
(id., p. 10); and (iii) if Brake had believed they were entitled to the benefit of Brake 1
they would have continued to prosecute that application rather than acquiescing to the
examiner’s rejection (id., pp. 10-11). Singh relies on the declaration of Dr. Falkinham to
support many of these arguments. We do not credit Dr. Falkinham’s testimony and find
these arguments unpersuasive.
As discussed above Count 1 does not require a nucleotide sequence encoding
EGF. Gene* encodes any non-Saccharomyces polypeptide. Accordingly, we find that
each of these arguments fails to address a limitation present in the count.
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