Deen's proposed count was not based solely on Dr. Chinnaiyan's testimony. As we stated in the
decision "Deen has not directed us to evidence sufficient to show that one skilled in the art would
have recognized that the fi7agment disclosed in the Deen provisional was in fact a TNFR
fragment" (Paper 62 at 23). Deen had the burden of proof but did not meet its burden in its
preliminary motions. 37 CFR § 1.637(a).
Furthermore, Dr. Chinnaiyan's testimony that one skilled in the art would not have
recognized the Deen provisional fragment as a fragment of a TNFR was not based solely on his
observation that the fragment did not contain a death domain. Dr. Chinnaiyan testified that other
indicators of a TNFR, e.g., multiple CRDs, were not present in the fragment (Paper 62 at 11-12
and 19). Dr. Chinnaiyan's cross-examination testimony highlighted that not all TNFRs have all
the indicators. However, overall, Dr. Chinnaiyan's testimony indicated that one skilled in the art
could not have reasonably predicted a TNFR based on the fragment found in the Deen
provisional application since insufficient indicators were present.
B. Request for hearing
Deen has indicated that it will not present any evidence on the issue of priority (Paper 64
at 2). Thus, the only issue before us is whether to modify our decision on preliminary motions.
As noted above, Deen has not directed us to any points that we misapprehended or overlooked in
rendering the decision.
Nonetheless, Deen states that "it is the preference of Deen to have an opportunity to
appear before the Board to present oral argument at a final hearing" (Paper 65 at 3).
We do not exercise our discretion to conduct a hearing in the circumstances before us.
Conducting a hearing where there is nothing new to consider would not be in the interest of
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