Wertz v. Rose

Not binding precedent of the Board
Paper 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
GAIL W. WERTZ,
QINGZHONG YU, LAURENCE A. BALL,
JOHN N. BARR, and SEAN P.J. WHELAN
Junior Party,
(Patent 5,789,229),
v.
JOHN K. ROSE
Senior Party,
(Application 08/435,032).
______________
Patent Interference No. 104,421
Before, SCHAFER, TORCZON, and LANE, Administrative Patent Judges.
LANE, Administrative Patent Judge.
FINAL JUDGMENT
A paper entitled DECISION OF THE ARBITRATOR ON PRELIMINARY MOTIONS
was filed 22 April 2002 (Paper 31). A paper entitled FINAL DECISION OF THE
ARBITRATOR was filed 25 March 2003 (Paper 38). Pursuant to the parties’ agreement to
arbitrate under 37 CFR § 1.690 (Paper 28) and for other reasons given, Count 2 is substituted for
Count 1 and judgment on priority as to Count 2 is entered against junior party Wertz.

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I. Background
The interference
1. The interference was declared on 9 August 2000 (Paper 1) between junior party Gail W.
Wertz, Qingzhong Yu, Laurence A. Ball, John N. Barr, and Sean P.J. Whelan (“Wertz”)
and senior party John K. Rose (“Rose”).
2. The interference was declared with the following count (“Count 1") (Paper 1 at 50):
A composition of matter according to claims 1, 6, or 11 of
Wertz (5,789,229)
or
a composition of matter according to claims 75, 103, or 132
of Rose (08/435,032).
3. Wertz claims 1, 5, 6, 10, 11, 14, and 15 were designated as corresponding to Count 1
(Paper 1 at 50).
4. Rose claims 75-99 and 101-132 were designated as corresponding to Count 1 (Paper 1
at 50).
Arbitrator’s decision on preliminary motions
5. According to the arbitrator’s decision on preliminary motions (Paper 31), Rose filed a
preliminary motion to modify the count and a preliminary motion asserting that Wertz
claim 11 is unpatentable.
6. The arbitrator determined that the count should be modified to the following (“Count 2")
(Paper 31 at Appendix B, brackets in original):
A virus particle of claim 1, wherein the non-segmented RNA virus is vesicular stomatitis
virus (VSV). [Wertz claim 5]
OR

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A virus particle of claim 6, wherein the non-segmented RNA virus is vesicular stomatitis
virus. [Wertz claim 10]
OR
A modified recombinant replicable vesiculovirus, comprising vesiculovirus N, P, and L
proteins, and a replicable vesiculovirus genomic sense (-) RNA, in which said genomic sense (-)
RNA, is modified by:
(a) the insertion of a foreign or heterologous RNA sequence into a
nonessential portion of said replicable vesiculovirus genomic sense (-)
RNA; or
(b) the replacement of a nonessential portion of said replicable vesiculovirus
genomic sense (-) RNA with a foreign or heterologous RNA sequence;
in which an RNA sequence complementary to said foreign RNA sequence encodes a peptide or
protein. [Rose claim 75, as amended]
OR
A modified inactivated recombinant vesiculovirus that is the produce of a method
comprising inactivating a recombinant replicable vesiculovirus, said recombinant replicable
vesiculovirus comprising N, P, and L proteins, and a replicable vesiculovirus genomic sense (-)
RNA, in which said genomic sense (-) RNA, is modified by:
(c) the insertion of a foreign or heterologous RNA sequence into a
nonessential portion of said replicable vesiculovirus genomic sense (-)
RNA; or
(d) the replacement of a nonessential portion of said replicable vesiculovirus
genomic sense (-) RNA with a foreign or heterologous RNA sequence;
in which an RNA sequence complementary to said foreign RNA sequence encodes a peptide or
protein. [Rose claim 103, as amended]
OR
A pure, recombinant, replicating and infectious vesicular stomatitis virus (VSV) particle,
comprising:
1) a functional RNA dependent RNA polymerase (L);
2) a vesiculovirus phosphoprotein (P);
3) a vesiculovirus nucleocapsid (N);
4) vesiculovirus protein selected from the group consisting of glycoprotein
(G) and matrix (M)
5) a 3' non-coding RNA sequence;

1 The arbitrator’s decision and Count 2 refer to “amended” claims 75 and 103.
However, it does not appear that Rose moved before the arbitrator to amend the claims under
37 CFR § 1.633(c). Therefore, we understand the arbitrator’s use of the term “amended” to refer
to the Rose claims as they appear in the count and not as they appear in the Rose application.
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6) a 3' to 5' RNA coding sequence, which encodes the vesiculovirus L, P, N,
and vesiculovirus protein required for assembly of budded infectious
particles and includes a heterologous gene (X), wherein said heterologous
gene (X) is inserted at an intergenic junction; and
7) a 5' non-coding RNA sequence, and wherein components 1 through 7 are
from the same type of VSV. [Rose claim 132, unamended]
7. Count 2 does not contain Wertz claim 11 which is part of Count 1.
8. Count 1 contains Rose claims 75 and 103, whereas Count 2 contains modified versions of
Rose claim 75 and 103.1
9. The arbitrator’s decision on preliminary motions indicates that only Wertz claims 1, 5, 6,
and 10 are appropriately designated as corresponding to Count 2.
10. Accordingly, the arbitrator did not decide whether Rose had shown that Wertz claim 11 is
unpatentable (Paper 31 at 2).
11. The arbitrator’s decision on preliminary motions indicates that Rose claims 75-99 and
101-132 are appropriately designated as corresponding to Count 2.
The arbitrator’s decision on priority
12. The arbitrator’s decision on priority indicates that, as to Count 2, junior party Wertz has
not proven an actual reduction to practice prior to Rose’s constructive reduction to
practice and that Wertz has not proven a conception prior to Rose’s conception (Paper 31
at 2).
13. Accordingly, the arbitrator determined that Wertz was not entitled to judgment on priority
as to its claims that correspond to Count 2 (Paper 31 at 9).

2 The pendency of the interference before the Board of Patent Appeals and
Interferences exceeded two years due to delay by the parties. Requiring Rose to file the terminal
disclaimer and to cancel claim 100 (and file a divisional if desired) is intended to minimize any
term extension Rose might receive based on the delay. (See Paper 32 at 3).
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Rose terminal disclaimer and amendment
14. Pursuant to requirements set forth in the Order entered 24 April 2002 (Paper 32), Rose
filed:
(1) a terminal disclaimer under 37 CFR § 1.321(b) disclaiming a portion of the term of
any patent issuing from its involving application equal to the amount of time between
9 August 2002 and the date the final arbitrator's decision is filed, and
(2) a paper canceling claim 100 in Rose’s 08/435,032 application.2
II. Discussion
The parties have agreed that the arbitrator’s decisions shall be binding on the parties and
that judgment thereon can be entered by the Board. (See 37 CFR § 1.690(a) and Paper 28). The
arbitrator’s decisions are dispositive as to the parties and have been considered by the Board. 37
CFR § 1.690 (c).
Based on the record of the interference and the reasons set forth in the arbitrator’s
decision on preliminary motions (Paper 31), it is appropriate to:
(1) substitute Count 2 for Count 1, and
(2) designate Wertz claims 1, 5, 6, and 10 and Rose claims 75-99 and 101-132 as
corresponding to Count 2.

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Based on the record of the interference and the reasons set forth in the arbitrator’s
decision on priority (Paper 38), it is appropriate to enter judgment on priority as to Count 2
against Wertz.
III. Order
Upon consideration of the record of the interference and for other reasons given, it is
ORDERED that the interference is redeclared to the following extent:
(1) The following count, Count 2, is substituted for Count 1:
A virus particle of claim 1, wherein the non-segmented RNA virus is
vesicular stomatitis virus (VSV). [Wertz claim 5]
OR
A virus particle of claim 6, wherein the non-segmented RNA virus is
vesicular stomatitis virus. [Wertz claim 10]
OR
A modified recombinant replicable vesiculovirus, comprising
vesiculovirus N, P, and L proteins, and a replicable vesiculovirus genomic sense
(-) RNA, in which said genomic sense (-) RNA, is modified by:
(a) the insertion of a foreign or heterologous RNA sequence
into a
nonessential portion of said replicable vesiculovirus
genomic sense (-) RNA; or
(b) the replacement of a nonessential portion of said replicable
vesiculovirus genomic sense (-) RNA with a foreign or
heterologous RNA sequence;
in which an RNA sequence complementary to said foreign RNA sequence
encodes a peptide or protein. [Rose claim 75, as amended]
OR
A modified inactivated recombinant vesiculovirus that is the produce of a
method comprising inactivating a recombinant replicable vesiculovirus, said

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recombinant replicable vesiculovirus comprising N, P, and L proteins, and a
replicable vesiculovirus genomic sense (-) RNA, in which said genomic sense (-)
RNA, is modified by:
(c) the insertion of a foreign or heterologous RNA sequence
into a nonessential portion of said replicable vesiculovirus
genomic sense (-) RNA; or
(d) the replacement of a nonessential portion of said replicable
vesiculovirus genomic sense (-) RNA with a foreign or
heterologous RNA sequence;
in which an RNA sequence complementary to said foreign RNA sequence
encodes a peptide or protein. [Rose claim 103, as amended]
OR
A pure, recombinant, replicating and infectious vesicular stomatitis virus
(VSV) particle, comprising:
1) a functional RNA dependent RNA polymerase (L);
2) a vesiculovirus phosphoprotein (P);
3) a vesiculovirus nucleocapsid (N);
4) vesiculovirus protein selected from the group consisting of
glycoprotein (G) and matrix (M)
5) a 3' non-coding RNA sequence;
6) a 3' to 5' RNA coding sequence, which encodes the
vesiculovirus L, P, N, and vesiculovirus protein required
for assembly of budded infectious particles and includes a
heterologous gene (X), wherein said heterologous gene (X)
is inserted at an intergenic junction; and
7) a 5' non-coding RNA sequence, and wherein components 1
through 7 are from the same type of VSV. [Rose claim 132,
unamended], and
(2) The following claims are designated as corresponding to Count 2:
Wertz: 1, 5, 6, and 10
Rose: 75-99 and 101-132;
FURTHER ORDERED that judgment on priority is awarded against GAIL W.
WERTZ, QINGZHONG YU, LAURENCE A. BALL, JOHN N. BARR, AND SEAN P.J.
WHELAN as to Count 2;

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FURTHER ORDERED that GAIL W. WERTZ, QINGZHONG YU,
LAURENCE A. BALL, JOHN N. BARR, AND SEAN P.J. WHELAN is not entitled to a patent
containing claims 1, 5, 6, and 10 of patent 5,789,229 that correspond to Count 2;
FURTHER ORDERED that a copy of the terminal disclaimer filed by Rose
(Paper 33) shall be given a paper number and entered in Rose’s 08/435,032 application;
FURTHER ORDERED that a copy of the amendment filed by Rose canceling
claim 100 (Paper 34) shall be given a paper number and entered in Rose’s 08/435,032
application;
FURTHER ORDERED that a copy of this decision shall be given a paper
number and entered in the administrative records of Wertz’s 5,789,220 patent and Rose’s
08/435,032 application; and
FURTHER ORDERED that if there is a settlement agreement in the
interference, the parties are directed to 35 U.S.C. § 135(c) and 37 CFR § 1.666.
RICHARD E. SCHAFER )
Administrative Patent Judge )
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
SALLY GARDNER LANE )
Administrative Patent Judge )
Entered: 28 March 2003
Attorney for Wertz (real party in interest:
UAB Research Foundation):
Edward R. Gates, Esq.
WOLF, GREENFIELD & SACKS
Attorney for Rose (real party in interest:
Yale University):
Samuel B. Abrams
Margaret B. Brivanlou
PENNIE & EDMONDS LLP