conclusions regarding the Cabilly invention, in particular, that “the Cabilly invention is directed
to cloning of the DNA encoding an anti-CEA antibody and preparation of the antibody by
recombinant techniques in E. Coli” (Paper 49 at 9).
Glaxo does not direct us to any particular portion of Dr. Youle’s testimony nor to any
particular portion of Dr. Vitetta’s testimony (at Exh. 2028). The portions of Dr. Youle’s and
Dr. Vitetta’s testimony referred to by Glaxo appear to be at Exh. 2012, ¶ 5 and Exh. 2921, ¶ 12,
respectively.
Cabilly concedes that it did not present claims to a therapeutic method during the
prosecution of its ‘419 application (Paper 104 at 3). However, as acknowledged by Glaxo, it is
appropriate for a party to add claims to other embodiments supported by the disclosure during
prosecution of its application (Paper 154 at 5). While it is possible that Cabilly did not originally
intend to claim the subject matter of the ‘611 claims, the relevant inquiry is whether Cabilly
described the claimed subject matter sufficiently to be entitled to claim it without violating the
written description requirement of 35 USC § 112, ¶ 1.
Glaxo argues that the therapeutic method claims using glycosylated CHO cells were not
presented until after the Cabilly attorneys read the Glaxo patents. However, it is not improper to
amend or insert claims intended to cover a competitor's method that the applicant's attorney has
learned about during the prosecution of a patent application. Kingsdown Medical Consultants,
Ltd. v. Hollister Inc., 863 F.2d 867, 874, 9 USPQ2d 1384, 1390 (Fed. Cir. 1988).
While Glaxo directs us to the opinion in Gentry Gallery Inc. v. Berkline Corp., 134 F.3d
1473, 1479, 45 USPQ2d 1498, 1503, the situation in Gentry is different from the situation before
us. We note the following portion of Gentry (emphasis added):
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