Interference 104,066
whereby the cells’ neoplastic phenotype is suppressed. LB, p. 9. Thus, our finding with
respect to the plain meaning of words in claims 1-6 is consistent with the teachings of
Lee’s specification. Accordingly, contrary to Lee’s arguments, we find that claims
1-6 are not limited to a therapeutic method of treating cancer cells in vivo.
With respect to Vogelstein’s claims designated as corresponding to the count,
we find Lee’s contention that the term “supplying” renders said claims generic because
methods of “supplying” a cell with a wild-type p53 gene would have been understood
“by one of [ordinary] skill in the art at the time of the invention” as referring to diagnostic,
therapeutic, and prophylactic methods (LB, p. 14), to be unpersuasive.
As set forth above, the burden is on Lee as the moving party to demonstrate that
each of Vogelstein’s claims designated as corresponding to the count is directed to an
invention which is separately patentable from the inventions described in each of Lee’s
claims designated as corresponding to the count. Therefore, if just one of Vogelstein’s
claims designated as corresponding to the count would have anticipated or rendered
obvious one of Lee’s claims designated as corresponding to the count, an interference-
in-fact exists. 37 C.F.R. § 1.601(j). Having determined that one of ordinary skill in the
art would have understood from the plain meaning of the terms therein, that Lee’s
claims 1-6 encompass methods of introducing a p53 suppressor gene into mammalian
cancer cells in vivo and in vitro, we move directly to Vogelstein’s claims, designated as
corresponding to the count. Specifically, we direct attention to Vogelstein’s claims 12-
12
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