Interference 103,781
Figure 1 to which Barton’s Claim 1 refers is a “Codon Usage In
Plants Frequency Table” for use in determining plant-preferred
codons. Nevertheless, the evidence of record does not show that
persons having ordinary skill in the art would have been led to
make and use the particular species of any one of Claims 13-14 of
Adang’s involved patent or Claims 41-43 of Fischhoff’s involved
application with a reasonable expectation of success, and
certainly without a reasonable expectation of the degree of
success achieved. See, inter alia, facts 121-128 and 192-196 on
pages 56-58 and 78-80 of Fischhoff’s priority brief (FPB 56-58 &
78-80), and the evidence of record cited in support thereof.
The issue of whether Adang’s Claims 13-14 and Fischhoff’s
Claims 41-43 are patentable in view of the DNA molecule broadly
defined by Barton’s Claim 19 corresponding to Count 2 differs
because Claim 19 is drawn to a genus of effective products rather
than a process of making effective products as recited in Adang’s
Claims 1-12, Fischhoff’s Claims 3, 5, and 39, and Barton’s
Claims 1-4, 7, and 20-22. Claim 19 of Barton’s involved
application reads (FPB 161):
19. A DNA molecule comprising a gene including a
protein coding sequence derived from the 5' end of the
gene from Bacillus thuringiensis encoding a delta-endotoxin
natively in excess of 72 kD in size and natively toxic
upon ingestio[n] by Manduca sexta, the gene including
appropriate regulatory sequences to express the protein
coding sequence so that cells of a plant hosting the gene
produce delta-endotoxin protein so as to be toxic upon
-45-
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