Appeal No. 2001-0869 Page 17
Application No. 08/453,347
Thus, claims 1-3 and 7-16 are directed to subject matter that is not
patentably distinguished from the claims corresponding to the count of the ‘998
interference, which Appellants lost. The decision in the interference therefore
precludes Appellants from allowance of these claims.
In an earlier communication from this board, Appellants were advised of
the potential interference estoppel issue and were ordered to explain why an
estoppel does not exist under Rule 658(c) and why the claims are not
unpatentable under the principles of In re Deckler. See Paper No. 34, mailed
Oct. 29, 2002.
Appellants responded that the claims involved in the ‘998 interference
are all directed to methods involving administration of JE/MCP-1
protein or cells expressing JE/MCP-1 protein. Thus, the subject
matter of the interference is derived from the discovery of the
purified protein, its source and its administration. In contrast,
claims 1, 3-5 and 7-13 of the present application are all directed to
methods involving administration of cells which are genetically
engineered to express JE/MCP-1 protein. This discovery is derived
from, and enabled by, the isolation of the gene, or DNA, that
expresses the protein. This is more closely related to the subject
matter of Interference 103,884, to which Appellants were awarded
priority. Briefly, Yoshimura et al. were awarded priority to the
protein and methods of using the protein (either in pure form or as
secreted by a native cell). Rollins et al. (Appellants) were awarded
priority to the DNA. Since the manufacture of genetically
engineered cells for use in treating patients requires the invention
of the DNA, not the protein, these claims are not properly rejected
under the doctrine of preclusion or precluded pursuant to 37 CFR
§ 1.658(c).
Paper No. 38, filed Dec. 30, 2002.
This argument is not persuasive. The claims involved in the ‘998
interference were not limited to treatment methods comprising administering the
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