Interference 102,728
b. Enablement
Singh argues that it had not been determined what genes, other than EGF, might
have been operative in the DNA construct disclosed in Brake 1 by the January, 1983,
filing date (Singh argument (3), on p. 28, above). Paper No. 30, pp. 3-5. Singh relies
on the testimony of Dr. Mullenbach for support. Id. We find this argument lacks merit.
Singh’s reliance on testimony from another interference at the time the
Opposition was filed was improper. We direct attention to 37 C.F.R. § 1.683(a)(1991)
which at the relevant time then required
... a party to file a motion (§1.635) for leave to use in an interference testimony of
a witness from another interference, proceeding, or action involving the same
parties, subject to such conditions as may be deemed appropriate by an
examiner-in-chief. The motion shall specify with particularity the exact testimony
to be used and shall demonstrate its relevance.
This Singh did not do.23 Thus, we sustain Brake’s objection to the admission of
this testimony set forth in the Reply pursuant to § 1.683(b)24 and shall not consider
those arguments in the Opposition which rely on Dr. Mullenbach’s testimony.
Moreover, we note that Singh did not repeat this argument in its brief (Paper No. 151).
Accordingly, we consider this issue to be abandoned.
23 We find that Singh was aware of its burden with respect to this regulation.
Singh argues that 37 C.F.R. § 1.601 defines a “party” as including the assignee of a
patentee involved in an interference. Paper No. 30, p.4, n.3. According to Singh, since
Dr. Mullenbach is an employee of Chiron, the assignee of the Brake patent, “it is
appropriate to cite Dr. Mullenbach’s testimony in this interference.” Id. We find this
argument to be disingenuous. Chiron is the real party of interest in the interference, not
Dr. Mullenbach.
24 Paper No. 44, p. 4, n.2.
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