Interference No. 105,099 Paper 25
Hannum v. Immunex Corp. Page 9
[29] It is conceivable that additional experimentation would have led to a convergence on a
consensus sequence identical to Immunex SEQ ID NO:2. The misreading of an
additional leucine residue after a string of eight leucine residues is well within the realm
of the possible. Such possibilities are not sufficient to support a determination that
Immunex SEQ ID NO:2 is inherent in the flt3 ligand genus Hannum claims.
DISCUSSION
A movant seeking judgment of no interference-in-fact must establish that the
parties' involved claims are patentably distinct. Nitz v. Ehrenreich, 537 F.2d 539, 190
USPQ 413 (CCPA 1976); Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196,
200 (Fed. Cir. 1984).11 In the present interference Hannum, the junior party, seeks to
establish that its invention, as represented in its claims, would not have anticipated or
rendered obvious the subject matter of the involved Immunex claims.12
The position of the United States Patent and Trademark Office is that Hannum's
generic claim inherently describes the invention that Immunex claims. An inherency
argument, however, may not be established by probabilities or possibilities. The fact
that a result may occur in a specific set of circumstances is not sufficient.
MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305
11 At the risk of seeming pedantic, we feel it worth noting that interference-in-fact and no interference-
in-fact are opposite sides of the same coin. While it is proper to talk about a "two-way" patentability test for
whether an interference-in-fact exists, the question formally before us is whether no interference-in- fact exists.
A two-way test for interference-in-fact is required precisely because the test for no interference-in-fact is a one-
way test: two-ways to get in is necessary because one-way is sufficient to get out. Notice, "Standard for
Declaring an Interference", 65 Fed. Reg. 79809, 79810 (Dir., USPTO 20 Dec. 2000).
12 This app roach is n ot without ri sk to Han num be cause it le aves op en the pos sibility that H annum 's
claims are anticipated or obvious in view of the published Immunex applications based on 35 U.S.C. 102(e)
rather than § 102(g), which is the basis for this interference.
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