Interference 104,066
(Bd. App. & Int. 1988). We apply the test set forth in § 1.601(n)7 to determine what
constitutes a separate patentable invention.
Turning to the case before us, we find that in neither its belated motion nor in its
brief for final hearing does Lee compare of each of its claims designated as
corresponding to the count with each of Vogelstein’s claims designated as
corresponding to the count and explain how each of said claims defines a separate
patentable invention. 37 C.F.R. §§1.601(j) and (n). Rather, we find that Lee only
provides sweeping generalizations such as “[n]one of the [Vogelstein] claims is
specifically directed to treating existing cancer in vivo in a mammal [LB, p. 19]”; and
“[n]one of the [Vogelstein] claims specifies the environment of the cell when p53 is
supplied to it... Lee[’s] claims, in contrast, are directed to methods of treating existing
cancers [LB, p. 19].” Accordingly, we find that Lee’s belated motion fails to satisfy the
procedural requirements of 37 C.F.R. § 1.601(j) and this failure alone is sufficient
ground for denying the motion.8
7 37 C.F.R. § 1.601(n) states, in relevant part, that
Invention “A” is a separate patentable invention with respect to invention
“B” when invention “A” is new (35 USC 102) and non-obvious (35 USC
103) in view of invention “B” assuming invention “B” is prior art with
respect to invention “A.”
8 We note Lee’s arguments with respect to what was known in the art at the time
the Lee application was filed. LB, pp. 19-21. That is, Lee contends that in 1990 it was
unexpected to those of ordinary skill in the art that the insertion of a wild-type p53 gene
into a cancer cell which lacked wild-type p53 function would result in the suppression of
the neoplastic phenotype. Id. We find these arguments to be misdirected. The
relevant issue here is whether one of ordinary skill in the art, would understand that
each of Vogelstein’s claims designated as corresponding to the count do, or do not,
7
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