Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 10
47. The discussion of propagating unstable DNA appears in an earlier part of the
specification dealing with trying to obtain clones from genomic DNA, not with splicing partial
clones together to make a full-length cDNA. Moreover, the discussion notes that it was not
completely successful (1042 at 20:22-24):
Although the region near cosmid cW44 remains to be recovered, the region near
X.6 was successfully rescued with these libraries.
48. The Drumm abstract (4006 at item 8) discussed above indicated that low-copy
number E. coli vectors were not a solution because aberrant sequences still resulted. Moreover,
the solution finally achieved by the Tsui inventors involved a very different approach: silent
mutation of cryptic bacterial promoters in the CFTR cDNA (4005 at 1228).
49. While we credit Dr. Ray's testimony about what the 609 specification literally
discloses and about the techniques available at the time the 609 application was filed, we do not
accept his conclusions that one skilled in the art would have appreciated the source of the
problem with propagating clones in E. coli. Indeed, the 609 specification discusses uses for the
full-length cDNA without ever explicitly acknowledging any problem existed. Without an
appreciation of the problem, any discussion of solutions to the problem is speculative at best.
50. Tsui bases its attack on Gregory's benefit on an alleged failure to disclose the best
mode for making and using CFTR cDNA. In particular, Tsui alleges that Gregory knew or
should have known that the cryptic E. coli promoter that Gregory identified in CFTR cDNA is
the wrong (inactive) one and that Gregory failed to correct the problem subsequently when filing
a continuation-in-part application.
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007