Slice's Claim 1, for example, claims an improved method of cloning reciting several steps
in the preamble. Thus, all those steps are presumptively old or conventional in the art. The sole step
following the phrase "the improvement comprising" is the use of a proliferating somatic cell which
has been expanded in culture as the donor cell. " Thus, Slice's claims 1-5 and the claims dependent
thereon rely solely on "a proliferating somatic cell that has been expanded in culture" to impart
patentability to the claims.
The Jepson format of the claims supports a holding that the proliferating somatic cell
limitation is material.
C.
Strelchenko argues that the use of proliferating somatic cells expanded in culture is not a
material limitation because the use of proliferating somatic cells was old in the art:
In short, use ofproliferating somatic cells, as defined in this interference, was
known years prior to the filing of the application for the Stice '577 patent;
what was new, if anything, was the use of cells that were cultured.
Paper 50, p. 19.
The fact that the use of proliferating somatic cells may have been known in the art is not
dispositive. The limitation is "a proliferating somatic cell that has been expanded in culture." This
requires that the cell used be both proliferating, i.e., undergoing active growth, and have been
expanded in culture, i.e. the cells have multiplied in vitro. Strelchenko does not assert that the use
of donor cells that are both proliferating and have been expanded in culture are part of the prior art.
Indeed, Strelchenko's statement about Slice's claims that "what was new, if anything, was the use
Stice's Claim I provides:
1. An improved method of cloning a non-human mammal by nuclear transfer
comprising
the introduction of a non-human mammalian donor cell or
a non-human mammalian donor cell nucleus into a non-human mammalian
enucleated oocyte of the same species as the donor cell or donor cell nucleus to
form a nuclear transfer (NT) unit,
implantation of the NT unit into the uterus of a surrogate mother of said species,
and
permitting the NT unit to develop into the cloned marnmal,
wherein the improvement comprises using as the donor cell or donor cell nucleus
a proliferating somatic cell that has been expanded in culture, or a nucleus isolated
from said somatic cell.
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