Interference 104,066
suppressor gene to a specific mammalian cancer cell such as a leukemia cell (claim
17), a prostate tumor cell (claim 19), etc. Since the cancer cell type recited in claims
12-22 is already known, we find that one of ordinary skill in the art would understand
that these claims do not encompass methods of diagnosis. Nor does Lee explain how
the referenced claims encompass a method of prophylaxis. Contrary to Lee’s
arguments, we find that the methods recited in the referenced claims are directed to the
introduction of a wild-type p53 tumor suppressor into a pre-existing mammalian cancer
cell; e.g., a leukemia cell, prostate tumor cell, etc. Thus, in our view, one of ordinary
skill in the art would understand that Vogelstein’s claims 12-22 do not encompass
methods of prevention.
Not only do we find that Lee’s arguments with respect to Vogelstein’s claims
encompassing methods other than therapeutic methods fail with respect to claims 12-
22, but we point out that Lee’s contention that Vogelstein’s claims are all generic is
equally unconvincing when Vogelstein’s claims 12-22 are compared with Lee’s claims
1-6. For example, it is not clear to us, and Lee has not explained how Vogelstein’s
claims 13, 14, 15, 17, 18 and 19 are generic with respect to its [Lee’s] claim 6. In view
of the foregoing, we find that one of ordinary skill in the art would understand that
Vogelstein’s claims 12-22 are directed to the therapeutic treatment of mammalian
cancer cells in vivo or in vitro. Thus, at a minimum, we find that Lee’s claims 1-6 and
Vogelstein’s claims 12-22 are directed to the same patentable invention.16 37 C.F.R.
16 We recognize that Lee does not rely on the declaration of Dr. Harris to
establish that each of its claims designated as corresponding to the count defines a
15
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