DIONNE et al v. LIOTTA et al - Page 16




          Interference No. 103,906                                                      


               We have construed Dionne’s claims broadly to encompass a                 
          method of treating any viral infection in a mammal.  Having done              
          so, we held those claims to be unpatentable under 35 U.S.C.                   
          § 112, first paragraph, because the scope of enablement provided              
          by Dionne’s specification is not commensurate with the breadth of             
          the claims.  However, even if we were to assume, arguendo, that               
          the claims in question are limited to treatment of infections                 
          caused only by “HBV and retroviruses such as HIV,”6 we would                  
          still hold Dionne’s claims unpatentable for essentially the same              
          reason.  This is because the sole in vitro test of antiviral                  
          activity reported in Dionne’s specification (Example 3) relates               
          only to a single strain of a single retrovirus (HIV-1 strain RF).             
          No other results are reported against any other HIV strains, let              
          alone against any other type of retrovirus.                                   
               According to the uncontradicted testimony of Dr. Sommadossi              
          (LR-198):                                                                     
                    It is accepted in the field of antiviral                            
               therapy that observation of activity against one                         
               virus, or even two viruses, is an insufficient basis                     
               on which to reasonably predict broad spectrum anti-                      
               viral activity, or even activity against related                         
               viruses.  [Underlining added for emphasis.]                              
               In view of Dr. Sommadossi’s testimony, the evidence of                   


               6This is the construction favored by Dionne (DRB-2).                     
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