Interference 102,728
Singh appealed to the Federal Circuit. Singh v. Brake, 222 F.3d 1366, 55
USPQ2d 1673, 1677 (Fed. Cir. 2000). There, the Court found that the Board had
overlooked
two crucial pieces of evidence: first, a ‘Synthetic DNA Request’ form, dated
December 1, 1982, in which Singh requested a 24-mer to carry out the loop
deletion experiment, and second, a notation adjacent to the order explaining
Singh’s intended use for the 24-mer [30] [Singh v. Brake, 222 F.3d at 1368-69, 55
USPQ2d at 1677].
The Court also, noted that
the Board makes no mention of the facts that the 24-mer is of precisely the same
length and of the precise complementarity needed to accomplish the loop
deletion, and thereby obtain the claimed construct; indeed, that oligonucleotide is
one of 2.8 x 1014 possible 24-mers that Singh could have ordered [Singh v.
Brake, 222 F.3d at 1369, 55 USPQ2d at 1678].[31]
30 The Court noted that “the Board completely overlooked Singh’s notation
adjacent to the DNA request form that clearly specified that the 24-mer was to be used
for accomplishing the necessary loop deletion.” Singh v. Brake, 222 F.3d at 1369, 55
USPQ2d at 1678. To that end, we direct attention to Singh’s argument, above, wherein
neither SX 3, Bates No. 126, nor the notation thereon, was mentioned. The Board
cannot overlook that which was not argued. Nor does the Board have clairvoyant
foresight to predict what the parties will argue on appeal. Keebler Co. v. Murray Bakery
Products, 866, F.2d 1386, 1388, 9 USPQ2d 1736, 1738 (Fed. Cir. 1989)(“Prescience is
not a required characteristic of the board. Thus, the board need not divine all possible
afterthoughts of counsel that might be asserted for the first time on appeal”).
31 Again, we direct attention to Singh’s arguments above. We point out that
Singh did not argue that the 24-mer Dr. Singh ordered on December 1, 1982, is of
precisely the same length and of the precise complementarity need to accomplish the
loop deletion. Nor did Singh argue that the referenced oligonucleotide is one of 2.8 x
1014 possible 24-mers that Singh could have ordered. The Board cannot consider
arguments which are not made.
46
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