Interference No. 104,436 Paper 98
ShyamaIa v. Hillman, Page 21
Shyamala correctly notes that an inventor need not know the mechanism underlying its
invention (Paper 89 at 205). The problem here, however, is more fundamental than simply not
knowing the mechanism underlying the diagnosis or treatment of a disease. No specific disease
was linked to MIP expression in the disclosure. A utility for N1IP cannot piggyback on known
roles for p38 without, at a minimum, a correlation between MIP and some p38 MAPK pathway
disease or condition. Shyamala's disclosures and briefing speculated that such a correlation may
exist, but Shyamala has yet to disclose any such correlation. Consequently, we cannot find that
ShyarnaIa conceived of a use for MIR
ShyamaIa is mistaken in its belief that the Board had previously found that some
Shyamala claims had utility. Instead, the Board held that neither side had carried its burden of
proof on the utility of Shyarnala's claims. The ultimate burden was on Hillman as the movant to
establish that Shyamala lacked utility, so in the absence of any showing on the merits with regard
to Shyamala's claim 6, the motion was denied with respect to claim 6 and claims that could
benefit from the purported utility of claim 6. Shyamala cannot transform a failure of proof by
Hillman into a proof of utility for Shyamala."
15 Citing Newman v. Quigg, 877 F.2d 1575, 11 USPQ2d 1340 (Fed. Cir. 1989); Fromson v. Adv. OffseLEI=
bc., 720 F.2d 1565, 219 USPQ 1137 (Fed. Cir. 1983); Cross, 753 F.2d 1040, 224 USPQ 739.
16 The concurrence would have us find Shyamala's claims unpatentable for lack of utility. The time to decide
that motion was during the preliminary motions period. Hillman did not carry its burden. Given the decision on priority,
it is unnecessary, as well as inappropriate, to reach this issue now.
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: November 3, 2007