Appeal No. 2004-0250 Page 11
Application No. 09/226,412
affirmance of the examiner’s rejection as a new ground of rejection under 37 CFR §
1.196(b).6
The question now becomes one of priority of invention. However, for the
reasons set forth below, the claims pending in this application are unpatentable on
grounds apart from those based upon Jensen. Thus, declaration of an interference is
premature. However, if claims are determined to be patentable in subsequent
proceedings but for Jensen, we make the following observations in regard to the three
declarations filed under 37 CFR § 1.131.
If the question of interference subsequently arises, based upon the respective
filing dates, appellants must make a showing under 37 CFR § 1.608(b). As set forth in
the rule, that evidence shall include if possible, “one or more corroborating witnesses,
supported by documentary evidence.” The three Rule 131 declarations of record do not
address the issue of corroboration.
Furthermore, appellants assert in Declaration II that “conception of an invention
encompassing the pulmonary delivery of LysB28ProB29-human insulin occurred prior to
March 27, 1997 and was diligently reduced to practice on April 18, 1997.” It would be
6 Appellants argued the claims on appeal as a group with the exception of
claims 49, 53, and 62 directed to the use of AspB28-human insulin. It is believed that
appellants separately argued the merits of those three claims in light of Declaration III
directed to establishing AspB28 and Lyspro possess similar biochemical and
biophysical properties. Since Jensen describes the use of both AspB28-human insulin
and Lyspro, we have addressed the merits of all claims subject to the examiner’s
rejection that have been separately addressed in the briefing and see no reason to
extend the analysis of the patentability issues in regard to Jensen further than
appellants and the examiner have done, especially since we set forth detailed reasons
why all of the pending claims are unpatentable in the other new grounds of rejection
that follow.
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