Interference No. 104,436 Paper 98
Shyamala v. Hillman Page 23
of identifying unknown tissues.: Among other problems, the record does not disclose more than
one instance of the experiment having been run. Thus, the utility of the claim rests on. a single
data point at a single time, for each tissue. Shyamala contends that MIP is part of a signaling
pathway, which strongly suggests that MIP expression will depend on factors other than simply
the tissue ripe, such as whether the tissue is in a state or environment that induces the signaling
pathway. Given the large number of variables and the unpredictability of the art, too little data
existed to extrapolate a tissue-typing assay from a single northern blot experiment. The fact.that
Shyamala did not even describe the assay until its third filing confirms our finding that Shyarnala
did not possess the tissue-typing assay when the two provisional applications were filed.
Hillman's pijori1y case
Since the junior party his the ultimate burden of establishing priority, a senior party may
rest its priority case on its accorded benefit for constructive reduction to practice. E.g., Griffin v,
Bertin 285 F.3d 1029,1031, 62 USPQ2d 1431, 1432 (Fed. Cir. 2002) (noting that the senior
party "elected to rely on his accorded benefit date ...rather than attempt to establish an earlier
priority date"). This is consistent with the practice that the junior party always bears the ultimate
burden of proof on priority.
During the preliminary motion phase, a party may file a motion to attack the benefit of a
constructive reduction to practice accorded to an opponent. 37 C.F.R. § 1.633(g). Hillman
successfully attacked Shyamala!s accorded benefit to its provisional applications. Shyamala did
not attack the benefit accorded to Hillman.
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