Abbott GmbH & Co. KG v. Yeda Res. Develop. Co., Ltd.

Docket No. 2015-1662

September 20, 2016

Brief Summary: DC decision that Abbott’s “purified and isolated TNF[alpha]-binding protein” claimed in US 5,344,915 is inherently disclosed by a German priority document affirmed.

Summary: Yeda appealed 2008 and 2015 DC decisions regarding Abbott’s US 5,344,915 relating to “[a] purified and isolated TNF[alpha]-binding protein” having a particular amino acid sequence (“TBP-II”). These decisions relate to Interference No. 103,625 between Abbott’s ‘915 patent and Yeda’s Ser. No. 07/930,443. The argument turned on whether the ‘915 patent (assigned 1990 filing date by the PTO) benefits from the written description (WD) and filing dates of either of two German patent applications filed in 1989 (the ‘072 application filed May 9, 1989 and the ‘089 application filed July 5, 1989). In 2008, the DC vacated PTO decision and found the “‘089 patent inherently discloses…TBP-II…and provides an adequate” WD. The PTO then found ‘072 application “sufficiently disclosed TBP-II” which the DC affirmed in 2015. If the PTO is correct, “then the field of prior art narrows to exclude the anticipating reference” (the “Engelmann” article published in 1990 describing and distinguishing the TBP-I and -II proteins). Yeda argued Abbott’s disclosure of the partial N-terminus of the claimed protein (9/15 amino acids recited in the claim) was not enough. Abbott argued the partial sequence is enough (inherently disclosed) when it “is disclosed along with other biological characteristics”. The FC opinion explains that “when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties” (Kennecott, FC 1987). Here, the panel found “TBP-II is the only protein with the same partial N-terminus sequence and additional traits disclosed in the ‘072 application” and is therefore inherently disclosed thereby (“It is not necessary for an application to disclose a protein’s complete N-terminus sequence in order to provide an adequate written description of that protein…it is undisputed that the invention described in an earlier application was the exact invention claimed by the later patent” (unlike Hyatt, FC 1998 and Wallach, FC 2004)). Yeda also argued Abbott relied on amino acids “missing from the ‘072 application” to distinguish the prior art during prosecution but the FC panel disagreed (“three of the five amino acids disclosed in Engelmann were disclosed in the ‘072 application and were themselves sufficient to distinguish TBP-I from TBP-II”). The FC panel also agreed with the PTO that the disclosure of 9/15 N-terminal amino acids and “several biological characteristics of the protein” provides sufficient WD. The 2015 decision was therefore affirmed; the 2008 decision was dismissed as moot.

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