Appeal No. 2001-0869 Page 18
Application No. 08/453,347
JE/MCP-1 protein itself or cells that naturally express JE/MCP-1. As discussed
above, Appellants’ ‘078 patent does not describe methods of administering cells
that naturally express JE/MCP-1. Therefore, the ‘078 patent’s claims 5 and 6 are
most reasonably construed as directed to administration of cells that have been
genetically engineered to express JE/MCP-1, such as the cells described in the
‘078 patent at, e.g., col. 6, line 67, to col. 8, line 3.
The ‘884 interference involved claims 1-5 of Appellants’ Patent 5,212,073.
Those claims are directed to DNA encoding JE/MCP-1 (claim 1), a vector
comprising such DNA (claim 2), a mammalian or bacterial cell transformed with
such a vector (claims 4 and 5), and a method of making JE/MCP-1 (claim 3).
The count in the ‘884 interference read as follows: “An isolated and purified DNA
molecular [sic] encoding human JE protein or MCP-1 protein, said protein
possessing monocyte chemoattractant activity.” See Paper No. 1 in the ‘884
interference. Thus, neither the count nor any of Appellants’ involved claims in
the ‘884 interference were directed to a method of treatment. Appellants’
favorable judgment in the ‘884 interference thus does not preclude rejection of
the present claims on the basis of the adverse judgment in the ‘998 interference.
To the extent that Appellants’ position is that the present claims should be
considered to correspond to the count of the ‘884 interference (which Appellants
won), we disagree. As discussed above, claims 5 and 6 of Appellants’ ‘078 patent
should be construed as directed to methods of treatment using genetically
engineered cells. Thus, it appears that Appellants could have moved to have
these claims designated as not corresponding to the count of the ‘998 interference
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