## Facts

- A three-party PTO interference (No. 101,096) concerned a single count claiming DNA per se: “A DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide.”
- Sugano filed a U.S. application on Oct. 27, 1980 and claimed foreign priority to a Japanese filing dated Mar. 19, 1980.
- Fiers filed a U.S. application on Apr. 3, 1981 and relied on a British filing dated Apr. 3, 1980 that disclosed the complete nucleotide sequence; he also sought an earlier U.S. date under 35 U.S.C. § 102(g) based on alleged prior conception and diligence.
- Revel (with Tiollais) filed a U.S. application on Sept. 28, 1982 and claimed foreign priority to an Israeli filing dated Nov. 21, 1979.
- Sugano’s Japanese filing disclosed the complete nucleotide sequence of DNA encoding human fibroblast beta-interferon and a method for isolating it.
- Revel’s Israeli filing disclosed methods to isolate mRNA and DNA fragments related to the interferon gene, but not a complete DNA sequence for the claimed molecule.
- Fiers asserted conception occurred when he disclosed outside the United States a protocol for isolating the DNA to U.S. scientists, who brought the protocol into the United States; a draft application brought into the United States on Feb. 26, 1980 described the method but not the nucleotide sequence.
- The PTO Board awarded priority to Sugano (Mar. 19, 1980), found Fiers had not proved earlier conception of the DNA, and held Revel’s Israeli filing did not satisfy § 112 for the DNA of the count.

## Issues

1. Whether Fiers proved conception in the United States of the specific DNA claimed by the count before Apr. 3, 1980 based on disclosure of a method for isolating the DNA, entitling him to priority under 35 U.S.C. § 102(g).
2. Whether Revel could rely on the Nov. 21, 1979 Israeli filing for priority because it satisfied written description and enablement under 35 U.S.C. § 112, ¶ 1 for the DNA of the count.
3. Whether Sugano’s Mar. 19, 1980 Japanese filing satisfied § 112, ¶ 1 for the claimed DNA, supporting the Board’s priority award.

## Decision

- The Federal Circuit consolidated the appeals and affirmed the Board’s award of priority to Sugano.
- Sugano was entitled to the Mar. 19, 1980 Japanese filing date because that application adequately described and enabled the claimed DNA.
- Fiers failed to establish conception of the DNA of the count before Apr. 3, 1980; disclosure of a research protocol or method did not establish conception of DNA claimed per se.
- Revel could not rely on the Nov. 21, 1979 Israeli filing date because it lacked an adequate written description and enablement of the full claimed DNA.

## Legal Principles

- For a claim to a substance per se (including DNA), conception requires a definite and permanent idea of the claimed molecule’s structure; a plan or method to obtain it is not enough.
- A “workable method” for preparing or isolating DNA does not establish conception of DNA when the claim/count is directed to DNA per se rather than DNA defined by a method of preparation.
- In interference priority based on a foreign application, the earlier filing must satisfy 35 U.S.C. § 112, ¶ 1 for the subject matter of the count; disclosure of methods and partial fragments, without the full structural description of the claimed DNA, is insufficient.
- Written description demands a disclosure showing possession of the claimed invention such that a skilled artisan can conclude the inventor had invented the claimed subject matter as of the asserted date.

## Conclusion

The court upheld Sugano’s priority because his foreign filing disclosed the complete DNA sequence and enabled isolation, while Fiers’s method-only disclosures did not prove conception of DNA claimed per se and Revel’s fragment-and-method foreign filing did not meet § 112 for the full claimed DNA.


Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993)