Interference No. 104,733
Page No. 32
molecules encoding for the protein, disclosure of amino acid sequence did not render
particular DNA molecules encoding the protein obvious). We conclude that Lilly claim 1
and UW claim 3 are patentably distinct as Lilly claim 1 does not render UW claim 3
obvious. Furthermore, Lilly claim 1 does not anticipate UW claim 3 as Lilly claim 1,
taken in light of the prior art, fails to teach all the limitations of UW claim 3.
Lilly claims 81 and 82 are directed to the coding sequence for the active light
chain of human protein C. Lilly claim 81 does not specifically recite the structure of the
coding sequence whereas Lilly claim 82 specifically sets forth the coding strand. The
coding strand in Lilly claim 82 contains 465 base pairs, i.e., 155 codons. In contrast,
UW claim 3 is directed to the cDNA encoding protein C and contains 1257 base pairs,
i.e., 419 codons. The amino acid sequence of human protein C light chain, such as
that recited in Lilly claim 81, and a particular DNA encoding that amino acid sequence,
such as that provided in Lilly claim 82, do not provide sufficient information for one
skilled in the art to predict the particular DNA sequence of UW claim 3. (Paper No. 17,
p. 11, ý21; Paper No. 27, p. 3, admitting UW facts 18-21). As Lilly claims 81 and 82 fail
to teach or suggest the cDNA of UW claim 3, we conclude that UW claim 3 is
patentably distinct from Lilly claims 81 and 82.
C. Lilly's Corresponding Claims Are Patentably Distinct from UW
Claim 1
UW claim 1 is directed to a plasmid or transfer vector that comprises cDNA
coding for a human protein C. According to Lilly, there are two possible claim
constructions for UW claim 1. (See, Paper No. 30, pages 4-5). First, Lilly contends that
Page: Previous 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 Next
Last modified: November 3, 2007