Interference No. 104,733
Page No. 34
compounds did not teach or suggest the selection of Baird's claimed bisphenol A); In re
Belle, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993)(DNA sequence would not have
been obvious in view of prior art reference that taught a vast number of possibilities but
did not teach or suggest why, among all those possibilities, one would seek the claimed
sequence). The evidence presented fails to teach or suggest the selection of Lilly's
claimed cDNA species from among the vast number of potential sequences that would
be encompassed by a broadly construed UW claim 1. As UW claim 1, taken in light of
the prior art, does not fairly teach or suggest Lilly's specifically claimed species, Lilly's
claimed species are patentably distinct from a broadly construed UW claim 1. As a
patentably distinct species is a "separate patentable invention" from its dominating
genus, there is no interference in fact between a broadly construed UW claim 1 and
Lilly's corresponding claims.
Based on the facts presented, neither UW claim I nor UW claim 3 impedes the
grant of Lilly's corresponding claims. Case, 730 F.2d at 750, 221 USPQ at 200. As
UW's allegedly corresponding claims do not impede the issuance of Lilly's
corresponding claims, there is no interference-in-fact. UW Preliminary Motion 1 for no
interference-in-fact is granted.
3. Lilly Did Not Have Authorization to Set Its Own Time Period for Filing
Motions to Add or Substitute a Count
Lilly had a full and fair opportunity to file motions responding to UW's motion for
no interference-in-fact. Specifically, UW's motion was filed under Rule 633(b). Rule
633(i) permits a party to respond to such a motion by filing a motion to: (i) redefine the
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