Interference 102,728
4. Conclusion
Singh argues that Dr. Singh’s conception of making a compound within the
scope of the count involved a method which was not a matter of routine knowledge
among those skilled in the art; i.e., the loop deletion mutagenesis method. Singh does
not rely on the disclosure by Dr. Singh of an operative method of making the referenced
compound using this novel method of mutagenesis to others. Rather, we find that
Singh’s entire case for conception rests on the order of a 24-mer and an
uncorroborated notation in a corner of Dr. Singh’s notebook (“oligonucleotide for
making in-frame deletion of "pro-IFN-D junction”). SX 3, Bates No. 126. We also find
Singh’s arguments that (i) the 24-mer is one of 2.8 x 1014 possible oligonucleotides that
Dr. Singh could have ordered, and (ii) there is no other use for the 24-mer other than for
loop deletion mutagenesis, to be based only on attorney argument to which we accord
little, or no, evidentiary weight.
Conception requires that Dr. Singh have a “specific and settled idea, ... not just a
general goal or research plan he hopes to pursue.” Burroughs Wellcome Co. v. Barr
Laboratories, Inc., 40 F.3d at 1228, 32 USPQ2d at 1919. Moreover, an inventor must
have an idea that is “definite and permanent enough that one skilled in the art could
understand the invention.” Id. at 1228, 32 USPQ at 1919.
Even if we assume, arguendo, that Singh’s notation does not require
independent corroboration, we find that it refers generically to any method of making an
in-frame deletion and not specifically to the loop deletion mutagenesis procedure
described in the Adelman publication (SX 53). We acknowledge that the 24-mer is of
84
Page: Previous 77 78 79 80 81 82 83 84 85 86 87 88 89 90 91 Next
Last modified: November 3, 2007