Interference 102,728
Singh argues that the Brake 1 specification “teaches away” from an “n=0”
construct. Paper No. 30, pp. 13-14. According to Singh, the Brake 1 specification
clearly states that the “useful DNA sequences which can be used for cassettes
for expression,” having the formula:
TR-L-(R-R(GAXYCX)n-W-(Gene*)d)y
contain an nN which “will generally range from 1 to 3, more usually from 2 to 3”
[id., p. 14].
Therefore, one skilled in the art would determine that the “glu-ala” or “asp-ala”25
sequences would be necessary for expression. Id. Singh relies on paragraph 9 of
Dr. Falkinham’s declaration for support.26 Id. We find this argument unpersuasive.
First, Singh has confused the factors used to demonstrate that a disclosure is
non-enabling (35 U.S.C. § 112) with the factors used to demonstrate the
nonobviousness of an invention (35 U.S.C. § 103). That is, a prior art reference which
is said to “teach away” from the claimed invention, is a factor which is considered when
25 Although Singh does not explain, the significance of the “asp-ala” sequence,
we find from a genetic dictionary (BX 25) that the (GAXYCX) sequence of Brake 1
formula can encode glu-ala or asp-ala. We further find from Brake 1 that both amino
acid combinations are recognized by the DPAP A enzyme. The ‘325 Application, p. 10,
lines 10-17. We point out that this finding is in agreement with our discussion in
footnote 13, supra.
26 Dr. Falkinham states:
9. Although there was a theoretical presentation of the n=0 construct
in the Brake 1 application, there was a clear statement that “n” in the
construct was “preferably 2 or 3” (column 3, line 25) or “usually 2 or 3”
(column 2, line 68). In addition, the only example described in the Brake 1
application, pYEGF-8, produced not an n=0 construct, but a construct
which would produce Glu-Ala-EGF. One skilled in the art would have
determined from the Brake specification that the n=0 construct was not
desirable [emphases added] [Falkinham declaration, p. 3, para. 9].
34
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