Interference 103,781
1984)(Adang Exhibit No. 121L (AX 121L)), also are prior art to
the involved claims under 35 U.S.C. § 102(b). Nevertheless, it
is our view that persons having ordinary skill in the art
reasonably would not have been led by any one of Fischhoff’s
Claims 3, 5, and 39-40 or Barton’s Claims 1-4, 7, and 15-22 to
make and use the subject matter defined by Claims 13-14 of
Adang’s involved patent or Fischhoff’s Claims 41-43 with a
reasonable expectation that the particularly modified Bt genes
would be more highly expressed in plants.
We note that Fischhoff’s method Claims 3 and 5 specify
removal of ATTTA sequences, yet Claims 13-14 of Adang’s patent
purportedly embody synthetic Bt genes having a greater number of
codons preferred by the intended plant. While Fischhoff’s method
Claim 39 and synthetic gene Claim 40 do specify “a greater number
of codons preferred by the intended plant”, neither claim
provides any specific guidance or direction for choosing plant-
preferred codons or comparing frequencies of plant codon usage.
Moreover, even if Fischhoff’s method Claims 3 and 5 might have
led persons having ordinary skill in the art generally to make
and use species of modified chimeric genes more highly expressed
in a chosen plant, there is no guidance or direction therein
toward the particular species of Fischhoff’s Claims 41-43. We
-43-
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