Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 13
and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988).
Not all of these factors need be reviewed to determine enablement. Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1371, 52 USPQ2d 1129, 1136 (Fed. Cir. 1999); Amgen, Inc. v.
Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir. 1991) (noting
that the Wands factors "are illustrative, not mandatory. What is relevant depends on the facts.").
Gregory does not address any of these factors for either the genomic DNA and RNA disclosures
or various non-cDNA protein recovery disclosures in the 609 specification. Consequently,
Gregory has not met its burden of proof to show the 609 specification fails to enable a single
embodiment within the scope of either the nucleic acid (882) count or the protein (228) count.
Tsui's contingent motions attacking Gregory's accorded benefit in the 882 and 228
interferences are moot since their contingency, the granting of Gregory's motion, has not
occurred. Tsui's unopposed motion to amend its claims is also moot since it has prevailed and
can address any necessary changes during further prosecution.
B. Gregory has shown that Tsui failed to provide an enabling disclosure
of an embodiment within the scope of the vector (993) count
Tsui has not pointed to a manner of making a vector within the scope of the 933 count
without resort to CFTR cDNA. In this context, Gregory's attack on the putative enabling
disclosure for such cDNA gains significance. Tsui does not identify any portion of the 609
specification that teaches a way to make full-length cDNA or a way to make a vector out of
partial, overlapping cDNA clones.
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