Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 17
must necessarily include the limitation not expressly disclosed. Transclean Co[p. v.
Bridgewood Svs., 290 F.3d 1364,1373, 62 USPQ2d 1865,1871 (Fed. Cir. 2002).
[50) We have already found that McDonald has not directed us to a preponderance of
evidence that TSF is necessarily the same as any TPO polypeptide fragment in the
present counts. This finding applies equally to a TPO polypeptide fragment within the
scope of Miyazaki 083 claim 18.
[51] McDonald's disclosure of TSF did not anticipate the invention of Miyazaki's involved
083 claims.
[52] McDonald also requests that the finding of anticipation be extended to the involved
Miyazaki 811 and 039 claims (Paper 141 at 20-21).
[53] This argument was not part of McDonald's original motion (Paper 141 at 20).
[54] McDonald has offered no claim-specific analysis for any of Miyazaki's involved 811 or
039 claims.
As previously noted, we must determine patentability in view of the particular
limitations of each claim. Van Geuns, 988 F.2d at 1184, 26 USP02d at 1059.
McDonald benefitted from this requirement in the motions decision, in which only some
of McDonald's claims were held to be unpatentable for reasons specific to those claims.
Once again, we have reconsidered our decision on McDonald preliminary
motion 2, but the relief it seeks is still DENIED.
McDonald prelimina!y motion 5
[55] McDonald wishes reconsideration of the decision not to adopt a new count that
McDonald proposed in his preliminary motion 5 "[i]n view of the arguments above" to
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