Interference No. 104,745
reasonable expectation that the recited biological process would achieve the particular recited
biological result:
The above statement in Burroughs . . . was not dealing with whether an inventor
had a reasonable expectation of producing the claimed device or composition, but
instead whether the inventor had a reasonable expectation that the device or
composition, once completed, would work for its intended purpose. Here, in
contrast, we are focusing on whether the inventors had a reasonable expectation
that they would produce the claimed invention. Here, in contrast, we are focusing
on whether the inventors had a reasonable expectation that they would produce
the claimed invention. Burroughs concerned six patents directed toward
administering a drug, AZT, to AIDS patients. It was undisputed that the inventors
had already synthesized the AZT. The claims of the first five patents recited
various permutations of administering the AZT to patients, without reciting
details of how the human body would react to the drug. See id. at 1225 n.3, 32
USPQ2d at 1917 n.3. As to the claims of these five patents, we held, as quoted
above, that the developers of AZT had sufficiently established conception of the
limitations of the claims (i.e., the drug itself and the intention to administer it to
humans), and that it was immaterial that the inventors lacked a “reasonable
expectation” as to how non-claimed aspects of the drug would work (i.e., the
particular effect of the drug on the body). Id. at 1228, 32 USPQ2d at 1920.
However, as to the claims of the sixth patent, which recited details of an
anticipated immune response to the drug (i.e., “a method of increasing the number
of T-lymphocytes in a human infected with the [HIV] virus ....”), we held that this
claim was not conceived in advance of further studies because of uncertainty as to
whether administering AZT actually would promote T-lymphoctye production,
i.e., the claimed intended use. Id. at 1231-32, 32 USPQ2d at 1923. Thus, the
inventors in Burroughs lacked a “definite and permanent idea” as to whether this
recited claim limitation of the sixth patent would be met by administering the
drug. Id. at 1230, 32 USPQ2d at 1923. In the present case, like the claims of the
sixth patent discussed in Burroughs, Hitzeman claimed the specific result of a
biological process. Because Hitzeman failed to show that he had a reasonable
expectation that the claimed result of the biological process would occur, his
conception argument cannot prevail.
Hitzeman, 243 F.3d at 1358, 58 USPQ2d at 1170. The count before us is not directed to a
biological process, let alone a biological process for achieving a specific biological result. Nor
does the count specify that the analyte ions are to take a specific form. Thus, Burroughs rather
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