Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 11
McDonald's insistence that TSF is inherently a TPO polypeptide fragment of the
counts is based on an assumption of the very thing McDonald must prove with a
preponderance of the evidence. McDonald urges that knowledge of the TSF sequence
at the time of invention was not required (Paper 141 at 10-137), but this is not the real
issue. The real issue is whether, now that McDonald knows about the sequences at
issue, he has taken any steps to prove what he contends is an inherent feature of TSF:
that it has a polypeptide sequence within a count. If he has, he has not shared the
results with us.
Even assuming McDonald has demonstrated that TSF is a disclosed TPO
polypeptide fragment, he has not demonstrated which fragment it is. Thus, if TSF were
the C-terminal fragment, it would still not be a priodty proof for count 5, which requires
an N-terminal fragment and, conversely, an N-terminal fragment would not suffice to
prove priodty for count 3. Thus, even if we made the most generous assumptions
possible about the nature of TSF, we would still not know what McDonald had proved
with respect to the two counts under consideration.
[401 The identity of TSF relative to the polypeptides of the counts remains a mystery.
7 Citing Riney v. Thomas, 77 F.2d 525, 25 USPO 418 (CCPA 1935) and Silvestri v. Grant, 496 F.2d
593, 181 USPQ 706 (CCPA 1974). The Court of Appeals for the Federal Circuit has characterized BjM and
Silvestri as "rare" exceptions to the general rule that a putative inventor must have known of all of the elements
of the count at the time of conception. Hitzeman v. Rutter, 243 F.3d 1345, 1354-55, 58 USP02d 1161, 1167
(Fed. Cir. 2001). To rely on inherency to prove conception, the allegedly inherent element must add nothing to
the count beyond the other recited limitations. Id. at 1355, 58 USP02d at 1167. McDonald has not shown that
the sequence information in the counts is extraneous in view of the other recited limitations.
McDonald also cites Mycogen Plant Science, Inc. v. Monsanto Co., 243 F.3d 1316, 58 USP02d 1030
(Fed. Cir. 2001) as citing Silvestri with approval. Mycogen, however, cites Silvestri for the unremarkable
proposition that the conception does not have to employ exactly the same words as the count. Moreover, it
continues by discussing how the inventors actually appreciated the limitation of the count at the time of
conception. Id. at 1336, 58 USPQ2d at 1047.
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