DeBoer v. Gordon

Informative decision only: persuasive authority, not binding precedent. When a movant (here, the parties jointly) shows that its involved claims would have been neither anticipated nor obvious over the other party's involved claims, so that the claims are not "patentably distinct" in the negative, i.e., are patentably distinct, there is no interference-in-fact, the interference was declared improvidently, and it should be terminated. The movant bears the burden to prove the other party claims a different invention, and the Board found a narrow species claim (WAP promoter) patentably distinct from broader genus claims (promoters generally) where the early, unpredictable state of the art gave no suggestion, motivation or reasonable expectation of success to select the species. No prior precedent of the Board is named as being modified; the decision applies Case v. CPC Int'l, Inc. and Aelony v. Arni to define interference-in-fact as patentable distinctness. For the party opposing the movant, and for a party that wants to keep an interference alive, the decision shows that a genus claim does not automatically make a species claim obvious, and that expert testimony about the state of the art can defeat that inference. For a party seeking to exit an interference, it shows that a joint motion backed by credible expert declarations and prior art references can end the interference and return an application to the examiner. The Board relied on Case v. CPC Int'l, Inc., 730 F.2d 745 (Fed. Cir. 1984), for the burden and meaning of no interference-in-fact, and on Aelony v. Arni, 547 F.2d 566 (CCPA 1977), for framing the test as whether the two sets of claims are patentably distinct. LEGAL TEST OR STANDARD: No interference-in-fact means there is no interfering subject matter, so that one party's claims are no impediment to a patent for the other party's claims. The movant has the burden to prove that the other party claims a different invention, and different invention means patentably distinct. A party establishes this by showing that its involved claims would have been neither anticipated nor obvious over the other party's involved claims. The Board asked whether the other party's claims, taken as prior art, would have given a person of ordinary skill a suggestion, reason, or motivation, or a reasonable expectation of success, to arrive at the claimed subject matter. TRIGGERING FACTS: The parties jointly moved for judgment of no interference-in-fact. DeBoer claim 7 recited a bovine with a general regulatory sequence, while Gordon claim 18 recited a whey acidic protein (WAP) promoter and a set of five mammals including cow. Expert declarations (Meade, Strijker) and references (Campbell & Rosen; Rosen et al.) showed that, as of 1986, no one was known to have expressed a heterologous protein in a transgenic animal's milk, the field was at an early stage, and the WAP promoter was known to be unusual and difficult to use. The parties argued there was no motivation, and that the art taught away from using WAP. KEY QUOTE: "If either party in an interference shows that its involved claims would have been neither anticipated nor obvious over the other party's involved claims, then it has established that a precondition for an interference — that the two parties are claiming the same patentable invention — is not met." (Paper 18, p. 9) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision follows Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984), and Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977). PRACTICE TIP: If you move for no interference-in-fact, carry your burden on patentable distinctness in both directions with concrete evidence, such as qualified expert declarations and contemporaneous references, showing no suggestion, motivation or reasonable expectation of success to move from the other party's claims to yours, rather than relying on attorney argument or the difference in claim scope.