Glaxo has shown that ‘611 claim 56 encompasses more than one patentable invention,
i.e., glycosylated antibodies and non-glycosylated antibodies. Thus, Glaxo has shown it is
appropriate to substitute Glaxo proposed Count 2 for Count 1. Lee v. McIntyre, 55 USPQ2d at
1412. Leaving claim 56 in the Count would permit the parties to submit proofs other than proofs
for the interfering subject matter.
We GRANT Glaxo preliminary motion 5 to the extent it seeks to substitute proposed
Count 2 for Count 1.
‘611 claim designations:
Glaxo states that ‘611 claims 56-60 should not be designated as corresponding to Count 2
since (Paper 51 at 3-4):
Briefly, claims 56-60 of Cabilly do not contain two of the most important features
of the claims of the GWI patents, namely, the requirement that the antibody be
glycosylated and the requirement that the treatment be applied to humans. These
limitations are fundamental to the GWI patents and should be included in the
Count.
Glaxo directs us to its preliminary motion 4. We do not consider Glaxo’s arguments in
its preliminary motion 4 as part of its preliminary motion 5 for reasons stated above.
37 CFR § 1.606 states that a claim that defines the same patentable invention as the
count shall be designated as corresponding to the count. In its preliminary motion 5, Glaxo does
not sufficiently explain why Cabilly claims 56-60 do not define the same patentable invention as
proposed Count 2. As discussed above, Count 2 defines a sub-genus of claim 56 and thus
Count 2 would anticipate ‘611 claim 56. Glaxo has not explained why ‘611 claims 57-60 would
not be anticipated or rendered obvious in view of Count 2. Accordingly, Glaxo has not shown
why ‘611 claims 56-60 should not be designated as corresponding to Count 2.
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