Interference No. 104,436 Paper 98
Shyarnala v. 101man Page 22
Shy=Wa's provisional applications
17
In seeking reconsideration of the original Board decision stripping Shyarnala of the
benefit'of its provisional applications, Shyamala must show how the Board erred in its decision.
Shyamala relies on its exhibits 1004-1009 to support the speculative attributes of Shyamala's
invention. The problems with this approach are twofold. First, the articles dated after the filing
dates of the provisional applications are not probative of what one skilled in the art would have
understood from them at the time the applications were filed. If anything, the articles suggest
that the field is still very much in an early exploratory phase, in which the few successful leads
are very different from Shyarnala's MIP. Second, the articles do not discuss the significance of
Shyarnala's MIR While it is quite apparent that the p38 MAPK pathway is of intense interest
because of its role in many medical conditions, neither the articles nor Shyamala elucidate any
significant role for MIP in that pathway or correlate MIP to any disease condition.
Shyarnala's argurnent'that the provisional applications disclose the tissue-typing invention
of claim 6 are also unpersuasive. While the provisional applications mention the northern blot
experiment that appears to be the ultimate inspiration of the tissue-typing claim, they do not
provide a credible basis for the claim. The northern blot experiment, if anything, establishes the
reverse: given known tissue samples (not said to suffer from any disease), it is possible to
determine a relative level of MIP mRNA expression (including no expression). This showing is
a far cry from a claim that relative levels of MIP mRNA expression would provide a useful way
17 Shyamala should have sought reconsideration sooner (Paper 71 at 29). Ordinarily, the decision on
preliminary motions should decide all questions about the scope of the count and the benefit accorded to the parties to
avoid the expense to the parties of having to prove multiple contingencies during the priority phase of the proceeding.
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