Interference 102,728
ordered on December 1, 1982. However, we find no mention on the referenced page
that there is no other use for the oligonucleotide other than for loop deletion
mutagenesis. As to the former page (Bates No. 108), we agree that the 24-mer is
complementary to the nucleotide sequence of the four amino acids at each end of the
“sequence at the junction.” However, we find no mention of the 24-mer on this
notebook page (probably because it was not ordered until a week later), and thus, no
mention that there is no other use for the oligonucleotide. It is not clear to us, and
Singh has not explained, how the combination of these two pages establishes that
there is no other use for the 24-mer other than for loop deletion mutagenesis.
Turning to notebook pages Bates Nos. 131-132, we find two handwritten
notebook pages from Dr. Singh’s notebook dated “1/5/83” and witnessed on “6/13/86.”
The upper right hand corner of Bates No. 131 contains an insert from an undisclosed
publication which is entitled “RESTRICTION MAP OF M13mp 8.” As to the two
handwritten pages, we point out that documents do not speak for themselves; they
must be explained. See 37 C.F.R. § 1.671(f)45 which requires a witness to explain the
45 37 C.F.R. § 1.671 (f) states “[T]he significance of documentary and other
exhibits shall be discussed with particularity by a witness during oral deposition or in an
affidavit.” See Notice of Final Rule at 48447, col. 3 1050 Off. Gaz. Pat. Office at 416, in
1984 the rules were amended to require the particularized explanation of material in
non-self authenticating documents. The commentary explained that “[B]y providing in
the rules that documentary evidence must be explained, the PTO hopes to save both
parties and the Board considerable difficulty in presenting and evaluating evidence.”
Here, because of the complexity of the biotechnology art, and the uniqueness of
its terminology, it is important that a witness’s explanation as to the content of a
document be sufficiently clear and detailed as to the specific entries in the exhibit(s)
relied upon in order for the Board to make a proper analysis of the record. It is not
sufficient to provide a bare allegation that certain work was done citing certain pages of
78
Page: Previous 71 72 73 74 75 76 77 78 79 80 81 82 83 84 85 Next
Last modified: November 3, 2007