Interference 102,728
In addition, we find that in para. 9 of his declaration, Dr. Falkinham cites to
column 2, line 68, and column 3, line 25.27 Thus, we agree with Brake that Dr.
Falkinham is discussing the Brake patent which is based on Brake’s continuation-in-
part, Application 06/522,909 (Brake 2), filed August 12, 1983. Accordingly, we find that
Dr. Falkinham’s conclusion that “[o]ne skilled in the art would have determined from the
Brake specification that the n=0 construct was not desirable,” is inconsistent with the
evidence of record. That is, the Brake specification from which Dr. Falkinham draws his
conclusion that the “n=0” construct is not desirable is the very specification which
contains the claim which is the subject matter of this interference. Claim 1 of the Brake
patent (Brake 2) is identical to Count 1 of this interference.
Singh further argues that modifying genetic constructs was unpredictable at the
time the Brake 1 application was filed. Paper No. 30, p. 14. Singh relies on paragraph
10 of Dr. Falkinham’s declaration for support. Dr. Falkinham states:
Brake attested to this unpredictability at page 14 of the 06/522,909 application,
where “Surprisingly, a deletion occurred where the codon for the 3rd and 5th
amino acids for EGF, asp and ser, were deleted with the remainder of the EGF
being retained” [emphasis added] [Falkinham declaration, pp. 3-4, para. 10].
We find this argument unconvincing.
It is not clear to us, and Dr. Falkinham does not explain, how this section of the
Brake 2 specification, which describes the addition of synthetic linkers to a DNA
27 Brake points out that Dr. Falkinham has misunderstood the teachings at
column 3, line 25, of the Brake patent. Brake Reply, Paper No. 44, p. 13. The
referenced section of the patent provides that r’ is “2 to 4, preferably 2 or 4" when “n is
0.” Id. We find that unreliable testimony, such as this, undermines Dr. Falkinham’s
credibility as an expert witness.
36
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