Interference No. 104,733
Page No. 31
Paper No. 17, pages 5-6, $ 11).
Comparing the sequence of UW claim 3 (UW Fig. 3, bp 127 to bp 1383) with the
pertinent portions of the cDNA sequence of Lilly claim 1, two nucleotide differences are
revealed in the coding region:
1 UW Fig. 3, nucleotide 423 (third position of codon 99) is thymine ("T"),
whereas Lilly's is guanine ("G").
2). UW Fig. 3, nucleotide 768, (third position of codon 214) is cytosine ("C"),
whereas Lilly's is thymine ("T").
(Paper No. 17, p. 3, 16; Paper No. 27, p. 3, admitting UW facts 6-16.). The parties
agree that:
The particular differences in the nucleotide sequences that occur between
the sequences of Foster [UW] claim 3 and Bang [Lilly] claim 1 within two
different codons could not have been predicted in advance based on
knowledge of either Bang's nucleotide or amino acid sequences alone.
(Paper No. 17, p. 5, 111; Paper No. 27, p. 3, admitting UW facts 6-16.).
When there is a specific, structurally related prior art compound, the question of
obviousness is whether the prior art suggested the specific modifications necessary to
achieve the claimed compound. In re Deuel, 51 F.3d at 1557-58, 34 USPQ2d at 1214.
On the record presented, there is insufficient evidence that Lilly's claimed sequence,
taken in combination with the prior art, would have suggested the specific modifications
to nucleotide 423 and nucleotide 768 such that one skilled in the art would arrive at the
cDNA sequence described by UW claim 3. Additionally, there is insufficient evidence
that one skilled in the art presented with the amino acid sequence of human protein C
would have been guided to form the specific cDNA sequence recited in UW claim 3. In
re Deuel, 51 F.3d at 1559, 34 USPQ2d at 1215-16 (Due to enormous number of DNA
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