UNIass' Alleged Date of Invention
F 20. LTMass preliminary statement (Paper 20) alleges an earliest date for priority of February 1,
1995. Paper 20, p. 1, 15.
F21. UMass' alleged date is subsequent to Infigen's accorded benefit date of December 23, 1993.
ANALYSIS
Infigen was accorded the benefit of the filing date of Application 08/172,385. Paper 1, p. 4.
In order to be entitled to the benefit of the filing date of an earlier application, the earlier application
must be a constructive reduction to practice of the subject matter of the count. 37 CFR § 1.637(f)(3).
A benefit application describes the subject matter of the count and provides an enabling disclosure
of it. Hyatt v. Boone, 146 F.3d 1348,1352,47 USPQ2d 1128, 1130 (Fed. Cir. 1998); Fiers v. Revel,
984 F.2d 1164,1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993). However, these requirements need
to be met only with respect to a single embodiment within the scope of the count. Weilv.Fritz 572
F.2d 856,865-66 n. 16,196 USPQ 600,608 n. 16 (CCPA 1978); Hunt v. Treppschuh, 523 F.2d 1386,
1389, 187 USPQ 426, 429 (CCPA 1975). As noted in Hunt, 523 F.2d at 1389, 187 USPQ at 429,
a constructive reduction to practice requires that "§ 112, first paragraph requirements need only be
met for an embodiment within the count." (emphasis added). See also, Utter v. Hirag , 845 F.2d
993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988) (benefit of the filing date of an earlier application
properly accorded where the earlier application described a species encompassed by the generic
count) and Weil, 572 F.2d at 865 n. 16, 196 USPQ at 608 n. 16 (as Hunt explains, "the § 112, first
paragraph requirements need only be met for an embodiment within the count").
UMass has filed a preliminary motion under 37 CFR § 1.633(g) attacking the accorded
benefit of the filing date of the 3 85 application. As the moving party, UMass has the burden of proof
to show entitlement to the relief requested. 37 CFR § 1.637(a). Thus, Umass has the burden of
proving that Infigen is not entitled to the filing date of the 385 application. More specifically, UMass
has the burden of showing that the 385 specification does not disclose an embodiment within the
scope of the count.
UMass asserts that the 385 application lacks a written description of the steps of identifying
cells exhibiting (i) a cytoplasmic:nuclear volume ratio of 50:50 or less or (ii) cytoplasmic vesicles.
Paper 29, p. 2. UMass sole argument is the following:
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007