Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 26
[77] We find clear and convincing evidence that Dr. McDonald's declaration purporting to
show the prior invention and efficacy of the C-terminal fragment were highly material to
the allowance of at least the C-terminal claims of the 666 patent.
[78] McDonald testified that no attempt has ever been made to obtain an amino acid
sequence for TSF [1055 at 71:4-6].
[79] During cross-examination of Dr. McDonald regarding his Rule 131 declaration, he
admitted that the reference in his declaration to the presence of a C-terminus was
wrong (1055 at 81:7-11 ]:
Q. But there was no attempt to correct the statement that both the N
and C terminus -
A. And that's a mistake, I should have. I should have corrected that.
But that was the basis for claiming the C.
[80] Dr. McDonald provided an explanation of his thinking in his testimony [1055 at 81:21
85:15]:
Q. And the claims that you were attempting to secure at that time are
the same ones that were issued. And if you look at column 23
[1048 at 23], you'll see that claim 1, and by reference all the way
through to claim 17, all refer to a C-terminal fragment, which you
define as encompassing residues 154 to 352 [sic, 3321.
And you told the Patent Office in Exhibit 1054, in paragraph
Roman numeral I little "b" that the preparation that you used
contained both the N and C terminuses of the molecule.
A. I think that's true, it did. It had a little bit of the C. Now, it didn't say
all of the C, did it? It doesn't say all of the C. It has some N and C.
And I believe that to be true.
Q. Okay. Did you think it was worth telling the Patent Office that at the
time you made this declaration and at the time you did the MAIDS
model work that's referred to in the declaration, you did not know
the amino acid sequence of TSF?
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