Interference 102,728
entries on the various pages of the notebooks/exhibits. This Singh has not done, and in
our review we find nothing on the two notebook pages which suggests that the 24-mer
oligonucleotide ordered on December 1, 1982, and “the M13 template” have no other
use other than for loop deletion mutagenesis.
Here, we agree with Brake that a reagent’s suitability for one purpose is not
probative of the number of uses to which it can be put. Paper No. 190, p. 67. We point
out that the burden is on Singh to prove, by a preponderance of the evidence, that there
is no other reasonable use for the 24-mer other than for loop deletion mutagenesis.
Here, however, Singh has not pointed to any testimony from Dr. Singh, or other
investigators at Genentech, to demonstrate that there was no other use for the
oligonucleotide. Rather, we find that Singh is attempting to shift the burden to Brake,
and possibly this merits panel, to establish that there were other uses for the 24-mer
other than the loop deletion mutagenesis technique performed by Dr. Singh. This is not
the proper legal standard. Since Singh has failed to point to any evidence on which we
are able to determine that there is no other use for the 24-mer, we find its position to be
based solely on arguments of counsel.46 Since such arguments cannot take the place
notes or notebooks attached to the affidavit or declaration. It is not the burden of the
Board to try to read the exhibits and correlate allegations made in the brief or testimony
with specific entries. Amoss v. McKinley, 195 USPQ 452, 453-54 (Bd. Pat. Int. 1977).
46 We point out that counsel’s arguments are inconsistent with the record in this
case. Singh discloses that the 24-mer can be used in the method relied upon for
constructive reduction to practice. See Application 06/506,098, p. 26 and Figure 11.
Singh’s application discloses a method wherein the 24-mer is employed “to modify the
junction between the factor ‘pre-pro’ sequence and the IFN-"1 gene such that the
removal of the modified ‘pre-pro’ sequence will result in the release of a mature
79
Page: Previous 72 73 74 75 76 77 78 79 80 81 82 83 84 85 86 Next
Last modified: November 3, 2007