Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 11
DISCUSSION
A. Gregory has not justified stripping Tsui of the benefit of the
609 application for the nucleic acid (882) and protein (228) counts
Gregory's attack on benefit focuses on Tsui's putative failure to disclose a manner of
making an embodiment within the scope of the nucleic acid and protein count. More
particularly, Gregory focuses on Tsui's putative failure to disclose a manner of making an
embodiment using cDNA. Tsui argues, and its 609 application shows, that it disclosed enabling
manners of making the nucleic acid and protein that do not depend on cDNA. Gregory's motion
does not point to any reason why those alternate (non-cDNA) manners of making would not have
been enabling.
Because of previous delays in the proceeding, the parties did not have an opportunity to
file reply briefs, but Gregory's solution does not lie in a reply brief in any case. A movant has the
obligation to make out a facially sufficient case in its motion. See Hillman v. Shyamala,
55 USPQ2d 1220 (BPAI 2000) (holding that a reply brief is not the place to fill in gaps in the
initial motion). The examples Tsui points to were apparent in the 609 application when
Gregory's motions were filed and should have been addressed at that time.
The Hillman decision also notes that disclosure for the purpose of according a
constructive reduction to practice is similar to, but different from, disclosure for the purpose of
attaining benefit under 35 U.S.C. 120. The principal difference lies in the practice that a
constructive reduction to practice need describe only a single enabled embodiment within the
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