By Donald Zuhn --
In an appeal from a decision of the Board of Patent Appeals and Interferences, the
Federal Circuit affirmed the rejection of claims directed to purified DNA molecules having promoter activity for the human involucrin gene (hINV) as
unpatentable under 35 U.S.C. § 102(b).
After isolating and sequencing the promoter sequence for
hINV in the plasmid pSP64λI-3 H6B, Appellants pursued claims directed to
specific portions of the promoter sequence having promoter activity. The claims were rejected under § 102(b) as
being anticipated by one of Appellants' own publications, disclosing the
approximate size and structure -- but not the sequence -- of the hINV promoter,
and by a second publication, disclosing protein-binding sites on the hINV
promoter. In Appellants' own publication
the plasmid pSP64λI-3 H6B was used to determine the structure of the hINV
promoter, while in the second publication the plasmid pSP64λI-3 H/Hc was used
to identify protein-binding sites on the hINV promoter. Appellants appealed the Examiner's final
rejection to the Board.
Appellants first asserted that even if the publications
cited against their application used plasmids containing the same hINV promoter
region, other workers had sequenced the hINV promoter region in the plasmid pSP64λI-3 H6B, and had obtained a sequence that differed significantly from the
promoter sequence described in Appellants' application. In addition, Appellants asserted that because
neither prior art publication specifically disclosed the nucleotide sequence
recited in their application, neither publication could anticipate their
application. The Board affirmed the
Examiner's final rejection, concluding that Appellants had failed to
demonstrate that the plasmids used in the prior art publications possessed hINV
promoter sequences that differed from the sequence described in Appellants'
application. The Board also determined
that although neither prior art publication disclosed the hINV promoter
sequence, the plasmids described in each publication necessarily possessed an hINV
promoter sequence that was identical to the sequence described in Appellants'
application.
In affirming the Board's decision, the Federal Circuit determined
that the Board had reasonably concluded that the plasmids used in Appellants'
prior publication and in Appellants' application were identical. The Court next concluded, in addressing
Appellants' first assertion, that it was irrelevant whether other workers had
obtained a different sequence for the promoter region of hINV since Appellants
could not rely upon the inability of another worker to correctly sequence the
promoter region of the hINV gene from plasmid pSP64λI-3 H6B when they had
accurately sequenced the promoter region themselves. Finally, with regard to Appellants' second
assertion, the CAFC determined that "[Appellants'] characterization that
the pending claims cover a novel DNA sequence having promoter activity, whereas the references disclose only the
starting material plasmid, is unsound," since "[t]he starting
material plasmid necessarily contains the gene of interest, including the
promoter region."
In re Crish (Fed. Cir. 2004)
Panel: Chief Judge Mayer and Circuit Judges Lourie and Dyk
Opinion by Circuit Judge Lourie
This article was originally published on Patently-O on January 3, 2005.
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