Interference No. 104,733
Page No. 28
claim designated to correspond to a count defines the same patentable invention as all
other claims designated to correspond to the count. See, e.g., Orikasa v. Oonishi, 10
USPQ2d 1996, 2004 (Comm'r Pat, & Trademark 1989).
Count 1 is the sole count in interference. As declared, UW claim 3 and Lilly
claims 1-82 and 84-90 correspond to Count 1. Additionally, Lilly has requested that UW
claim 1 be designated as corresponding to Count 1. For purposes of determining if
there is no interference-in-fact between the parties, we will assume that Lilly is correct
in stating that UW claim 1 corresponds to Count 1. Accordingly, we compare UW
claims 1 and 3 with Lilly's corresponding claims to determine whether the parties are
claiming separately patentable inventions.
A. Anticipation and Obviousness
A prima facie case of obviousness is established when the teachings of the prior
art would have suggested the claimed subject matter to a person of ordinary skill in the
art with a reasonable likelihood of success of achieving the suggested invention. In re
Dow Chem., 837 F.2d 469, 473, 5 USPQ2d 1529,1531 (Fed. Cir. 1988). Any
motivation or suggestion to modify the prior art references must flow from some
teaching in the art that suggests the desirability or incentive to make the modification
needed to arrive at the claimed invention. In re Napier-, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885,
1888, (Fed. Cir. 1991).
A claim to a specific cDNA is not made obvious by mere knowledge of a desired
protein sequence and methods for generating the various cDNA that have the potential
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