Interference 105,004 Paper 18
DeBoer v. Gordon
32. Moreover, the parties urge that the early state of the
art of making transgenic animals in 1986 would have further
complicated matters because it would have been difficult to
distinguish problems due to inherent structural features of the
WAP promoter from general problems of expressing proteins in
transgenic animals.
33. The parties conclude that expression using the WAP
promoter, as recited in Gordon’s claims, is patentably distinct
from expression using the genera of promoters or the alternative
casein promoter recited in the DeBoer claims. Accordingly, they
urge that there is no interference-in-fact.
Discussion
Test and burden of proof
“No interference-in-fact” means there is no interfering
subject matter, that one party’s claims are no impediment to a
patent for the other party’s claims. The movant has the burden
to prove that the other party claims a different invention from
his own.” Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ
196, 200 (Fed. Cir. 1984). In this context, “different
invention” means “patentably distinct.” Aelony v. Arni, 547 F.2d
566, 570, 192 USPQ 486, 490 (CCPA 1977) (“Sections 102, 103, and
135 of 35 U.S.C. clearly contemplate where different inventive
entities are concerned that only one patent should issue for
inventions which are either identical to or not patently distinct
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