Interference 103,579
far less significant for comparing the subject matter of the
respective parties’ claims than the similarities and differences
in the structures of the DNA sequences in the antisense
constructs used to inhibit expression of the potato gene and
suppress amylose formation in potato plants. In this case,
functional language and/or specified utility is insignificant
because we find that the function and/or specified utility of the
claimed subject matter depends on the chemical structures of the
DNA sequences in the antisense constructs of the claims of the
respective parties and the chemical structures of the DNA
sequences in the antisense constructs of the claims of the
respective parties are well defined for comparison. Functional
language and/or relative degrees of utility are more significant
where the chemical structures upon which all the claimed subject
matter of the respective parties is based cannot be compared.
Compare In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966
(Fed. Cir. 1985):
Thorpe argues that even if the performance of a
compound is comparable to that of the prior art, this
fact does not necessarily imply that the structures
are identical. We agree.
Evidence that prior art potatoes do not necessarily or
inherently possess the same properties or produce the same
results may become significant if the claimed and prior art
antisense constructs used to transform the potato plants
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