Interference No. 104,021 Paper No. 112
Griffin v. Bertina Page 10
This is not a case that turns on whether the test results are sufficient evidence of a
reduction to practice. Even if we assume that the testing was properly done and properly
interpreted, and if we further accept that the test was equivalent to the diagnostic method of the
count,13 we still have no basis for inferring that the inventors recognized the significance of the
test by 2 December 1993. With hindsight, one can see that the nt 1691 mutation is in a codon
that changes the coding of a critical amino acid (arginine) at a critical place (a terminal cleavage
site), which might have enhanced the significance of the identification, but the testimony of Drs.
Griffin, Greengard, and Fernandez does not even go that far. All they purport to have found was
a point mutation in one patient, while other evidence indicates that they had also
contemporaneously identified several other mutations of interest. We cannot attribute to Griffin,
nunc pro tunc, the knowledge of the significance of the nt 1691 mutation absent support in the
record. The portions of the record to which we have been pointed, including the testimony of the
inventors, does not support a finding that the Griffin inventors had a contemporaneous
understanding of the significance of their discovery.
ORDER
Upon consideration of the arguments and evidence on priority, it is
ORDERED that judgment on priority as to count 4 is awarded against junior party
Griffin;
13 The test used knowledge of the disease to identify the mutation, which is the mirror image of using the
mutation to identify the disea se. Even assum ing the test could qua lify as a reduction to prac tice, Griffin would still ha ve
to show that the inventors recognized the correlation between that mutation and the disease.
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