Interference No. 104,761 Paper108
Univ. of New Mexico v. Fordham Univ. Page 7
12 are composition claims and are not stated in terms of a product-by
process. Consequently, Fordham's obviousness analysis must proceed
from the obviousness of hspl 10 family members from the enumerated
hsp70 family members.
While the parties dispute whether the hspl 10 family is part of the
hsp70 family based on the degree of sequence and domain identity or
similarity between hspl 10 and DnaK, we are provided very little
motivation for the substitution of an enumerated (in claims 13, 19, and 25)
hsp70 family member with an hspl 10 subfamily member, or with the
modification of such an hsp70 fa mily imember into an hspl 10 family
member. In the context of UNM's disclosure, the only thing linking these
heat-shock proteins is the fact that they (and members of other hsp
families) may be purified in the same way. Since claim 7 is not a product
by-process claim, however, this process similarity does not help make out
a case for obviousness. We cannot conclude that hspl 10 complexes
would have been obvious in view of other hsp70 complexes. If anything,
the evidence suggests that a person having ordinary skill in the art would
have expected hspl 10 complexes to have been very different.
[13] Fordharn contends that the decision on motions applied the wrong standard for
determining the separate patentability of the subject matter of UNM 716 claims 7-12
over the subject matter of count 3 (Paper 102 at 2-3):
In rejecting Fordham Preliminary Motion 4, the Board focused on
the differences between hspl 10 per se and e.g. DnaK per se (a
representative hsp70 family member recited in Count 3) (Decision at
page 45, first full paragraph). Instead, Fordharn submits, the question of
the patentable distinctness of UNM '716 claims 7-12 should have been
established by determining whether the subject matter of the claims, i.e.
ternary hspl 1 O-ADP-peptide complexes, would have been obvious over
the hsp70-ADP-peptide complexes recited in Count 3.
Although Fordham acknowledges that hspl 10 and the hsp70 family
members of Count 3 are different proteins, Fordham submits that the
ternary hspl 1 O-ADP-peptide complexes of UNM'716 claims 7-12 are
obvious over e.g. the DnaK-ADP-peptide complexes of Count 3. More
specifically, Fordharn submits that in rendering the Decision concerning
that part of Fordham Preliminary Motion 4 requesting that UNM '716
claims 7-12 be designated as corresponding to Count 3, the Board
overlooked or misapprehended Fordham's argument that both hspl 10
and e.g. DnaK have common functional domains providing the critical
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