Interference 102,728
involves a specific approach to the particular problem at hand. It must also be
sufficiently precise that a skilled artisan could carry out the invention without undue
experimentation” [emphasis added]. Burroughs Wellcome Co. v. Barr Laboratories,
Inc., 40 F.3d at 1229-30, 32 USPQ2d at 1921.
Singh now shifts its argument and alleges that Dr. Singh had conception of a
DNA construct within the scope of Count 1, and a novel method of making said
compound by the “loop deletion” method on December 1, 1982. According to Singh,
the “loop deletion” technique was a new method developed by researchers at
Genentech in late 1982 and was published late in 1983. Paper No. 151, pp. 85-86.
Paper No. 180, p. 9. We recognize that when a method of making a compound with
conventional techniques is a matter of routine knowledge among those in the art, a
compound may be conceived when it is described. Oka v. Youssefyeh, 849 F.2d at
581, 7 USPQ2d at 1171. Here, however, Singh acknowledges that “loop deletion”
mutagenesis was not a conventional technique and was not a matter of routine
knowledge among those skilled in the art on December 1, 1982. Thus, the relevant
issue is: when did Dr. Singh have conception of a definite and permanent idea of the
“loop deletion” approach to the problem of eliminating the nucleotide sequence
encoding the “glu-ala” residues of the " factor spacer sequence present in the yeast
54
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