to allow a party to modify its preliminary statement when the count is modified, in the present
situation the filing of a modified preliminary statement by Glaxo is not necessary. Since the
subject matter of Count 2 is encompassed by the subject matter of Count 1, we see no reason
why Glaxo’s alleged dates would be any earlier for the subject matter of Count 2 than they are
for the subject matter of Count 1.
In Glaxo preliminary motion 5, Glaxo argues that Cabilly should not be accorded priority
benefit of the ‘419 application, filed 10 June 1988, for the subject matter of Count 2. In
particular, Cabilly argues that the ‘419 application does not provide written description as
required by 35 USC § 112, ¶ 1, for an embodiment within the scope of Count 2. In Glaxo
preliminary motion 3, Glaxo moves under 37 CFR § 1.633(a) for judgment that the involved
Cabilly claims are unpatentable for failure to comply with the written description requirement of
35 USC § 112, ¶ 1.
Glaxo acknowledges that Cabilly’s involved application and the ‘419 application are
“identical” (Paper 203 at 14) and that Glaxo’s arguments in its preliminary motion 3 are
substantially the same as its arguments that the ‘419 application fails to provide written
description for an embodiment of the Count17 (Paper 203 at 15).
The written description required for patentability differs from that required for priority.
Priority is not a basis for granting a patent to a party; rather, it is the basis for denying
patentability to another party under 35 U.S.C. 102(g)(1). Cromlish v. D.Y., 57 USPQ2d 1318,
1319 (BPAI (ITS) 2000). Thus, a single described and enabled embodiment within the scope of
17 While counsel for Glaxo appeared to be referring to Count 1, we note that Glaxo’s
arguments that the ‘419 application lacks written description for an embodiment within the scope
of the count appear to be substantially the same whether the count is Count 1 or Count 2.
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