Interference No. 105,099 Paper 25
Hannum v. Immunex Corp. Page 10
(Fed. Cir. 1999). The existence of three isoforms that are markedly distinct from each
other as well as from Immunex SEQ ID NO:2 militates against a finding that the flt3
ligand species of Immunex is inherent in Hannum's generic description of its claimed
flt3 ligands. Taken at face value, it is possible to isolate many flt3 ligands from mice
that are sequentially distinct from Immunex SEQ ID NO:2. There is no more than a
speculative basis for inferring that further experimentation would have lead to a
convergence of what Hannum discovered and what Immunex claims.
The examiner relies on an In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430,
433-34 (CCPA 1977), approach to support a finding of inherency. Best, however, is
distinguishable from the present case on both facts and procedure. Best claimed a
zeolite in terms of its physical characteristics and a process for making the zeolite in
functional language directed at a property of the finished product. The examiner
rejected the claims over prior art showing a very similar process for making a zeolite,
but lacking a description of the functional step of the process. The court concurred that
the examiner had made out a prima facie case of inherency sufficient to shift the
burden to Best to prove a difference. Cf. In re King, 801 F.2d 1324, 1327, 231 USPQ
136, 139 (Fed. Cir. 1986) (the Office is not equipped to test the properties of claimed
inventions against prior art). The problem here is that the face of the Hannum
specification undermines the prima facie case of inherency by providing exceptions to
any inherency finding. The speculation that further investigation might produce a
different result cannot overcome this problem.
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