unpatentability over prior art. Stice Application 08/781,752, Paper 6, pp. 2-9 and Paper 8, pp. 2-14.
Stice responded by cancelling all claims and presented new narrower claims, some in Jepson format,
limited to using "a somatic cell or cell committed to a somatic cell lineage capable of division."
Stice Application 08/781,752, Paper 12, pp. 1-6. However, the examiner did not allow those claims
as amended. Rather, she allowed claims only after further amendment, by examiner's amendment,
adding the requirement that the donor cell be "a proliferating somatic cell that has been expanded
in culture." Stice Application 08/781,752, Paper 15, pp. 1-6.
This prosecution history provides strong support for holding that the "proliferating somatic
cell" limitation was necessary for the patentability of the Stice claims and is therefore a material
limitation. A limitation is material if it is necessary to patentability. Corbe , 568 F.2d at 765, 196
USPQ at 343.
B.
The form of Stice's claims themselves also indicates the importance of this limitation to
patentability. Stice independent claims 1-5 and the claims dependent thereon are presented using
the "Jepson" format." A Jepson claim is a claim to the invention described in the preamble in
combination with an improvement. Pentec. Inc. v. Grgphic Controls Corr)., 776F.2d 309,315,227
USPQ 766, 770 (Fed. Cir. 1985). Reciting matter in the preamble up to a phrase such as "the
improvement wherein" is an implied admission that the subject matter of the preamble is
conventional or old in the art if the work is not that of the inventor. Siolund v. Musland, 847 F.2d
1573, 1576-77, 6 USPQ2d 2020,- 2023 (Fed. Cir. 1988). Neither Stice nor Strelchenko have
challenged the presumption that the subject matter of the preamble constitutes an admission. Nor
have the parties directed us to anything in the record or provided an explanation which would
provide a basis for concluding that the use of the Jepson format is not an admission that the preamble
of Stice's 577 claims is prior art. Seec.g.,InreEhrreic 590F.2d9O2,909-910,20OUSPQ504,
510 (CCPA 1979) (holding that facts of record provided a basis for holding that the preamble was
not an admission).
io Stice independent Claim 6 and its dependent claims are not presented in Jepson format but similarly
require the use of "a proliferating somatic cell which has been expanded in culture."
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