Barton et al or Fischhoff et al v. Adang et al. - Page 131




          Interference 103,781                                                        

          (Claim 11 of Adang’s involved U.S. 5,380,831) as a solution to              
          the problem.  Even if we presume that the evidence supports a               
          finding that Drs. Adang and Murray suspected that modification of           
          native Bt DNA sequences encoding toxin to better resemble plant-            
          preferred codon usage would improve expression of the sequence in           
          plants, Drs. Adang and Murray continued to regard the search for            
          the region or regions of the native Bt gene that caused Bt RNA              
          instability in plants as the principal solution to the problem              
          (AR 0107-0108).  We find that prior to December 12, 1986, and               
          during the critical period from December 12, 1986, to September             
          9, 1988, Drs. Adang and Murray were not confident what caused               
          premature termination of transcription in plants transformed by             
          Bt gene sequences; i.e., why they found Bt RNA sequences fewer in           
          amount, if any, and much shorter in length, than would have been            
          predicted in plants transformed by native Bt genes encoding                 
          insecticidal protein (AX 101B; AR 4153).  Moreover, the evidence            
          weighs heavily against Adang’s argument that it had “‘a definite            
          and permanent idea of the complete and operative invention, as              
          it is therefore to be applied in practice.’  Coleman v. Dines,              
          754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985) . . .”,               
          Kridl v. McCormick, 105 F.3d 1446, 1449, 41 USPQ2d 1686, 1689               
          (Fed. Cir. 1997), or so clearly defined the invention that “only            
          ordinary skill would have been necessary to reduce the invention            

                                        -131-                                         





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