CONTROL NOS. 90/007 542 AND 90/007 859
`REEXAMINATION CONTROL NOS. 90/007,542 AND 90/007,859
`
`DOCKET NOS. 22338-10230 AND -10231
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent
`Attorney's Docket No. 22338-10230
`
`Control Nos.:
`
`Confirmation Nos.:
`
`90/007,542
`90/007,859
`
`7585 ('542)
`6447 ('859)
`
`Filed:
`
`13 May 2005
`23 December 2005
`
`('542)
`('859)
`
`Patent Owner:
`
`Genentech, Inc. and
`City of Hope
`
`Group Art Unit:
`
`3991
`
`Examiner:
`
`B.M. Celsa
`
`For:
`
`Merged Reexaminations of U.S. Patent No. 6,331,415 (Cabilly eta/.)
`
`1.
`
`2.
`
`DECLARATION OF DR. DOUGLAS A. RICE UNDER 37 C.F.R. § 1.132
`
`I am a citizen of the United States and reside in Leawood, Kansas.
`
`I am the same Douglas A. Rice who provided a Declaration in connection with
`
`Reexamination No. 90/007,542 on November 25, 2005.
`
`3.
`
`As I indicated in my earlier Declaration, I have been retained to provide my scientific
`
`opinions on certain matters that have been raised in the reexamination proceedings
`
`involving U.S. Patent No. 6,331,415 ("the '415 patent"). I also note that I have been, and
`
`am being, compensated for my time at a rate of $450 per hour.
`
`4.
`
`My background and experience are essentially unchanged relative to how I described
`
`them in my earlier Declaration.
`
`5.
`
`I reviewed the following references which were identified by the Patent and Trademark
`
`Office (PTO) in the course of preparing this Declaration:
`
`Cabilly eta/., U.S. Patent No. 4,816,567 ("the '567 patent");
`
`Cabilly eta/., U.S. Patent No. 6,331,415;
`
`Axel eta/., U.S. Patent No. 4,399,216 ("Axel");
`
`EVID~ J\}jPENDIX
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`DOCKET NOS. 22338-10230 AND -10231
`
`Rice eta/., PNAS 79:7862-7865 (1982) ("Rice" or "1982 PNAS paper");
`
`Kaplan eta/., European Patent No. 0 044 722 ("Kaplan");
`
`Accolla eta/., PNAS 77:533-536 (1980) ("Accolla");
`
`Builder eta/., U.S. Patent No. 4,511,502 ("Builder");
`
`Valle eta/., Nature 300:71-74 (1982) ("Valle If');
`
`Valle eta/., Nature 291:338-340 (1981) ("Valle f');
`
`Deacon eta/., Biochemical Society Transactions 4:818-820 (1976)
`("Deacon");
`
`Dallas, PCT Application Publication No. WO 82/03088 ("Dallas");
`
`Ochi eta/., Nature 302:340-342 (1983) ("Ochi"); and
`
`Oi eta/., PNAS 80:825-829 (1983) ("Oi'').
`
`6.
`
`I also reviewed documents associated with this reexamination proceeding including all of
`
`the materials identified in my earlier Declaration, and the following materials:
`
`A PTO Office Action in Reexamination Nos. 90/007,542 and 90/007,859,
`dated August 16, 2006 ("Second Office Action");
`
`A PTO Order Granting ex parte reexamination of the '415 patent, dated
`January 23, 2006 ("Second Reexamination Order"); and
`
`A Request for Ex Parte Reexamination, dated December 23, 2005
`("Second Request for Reexamination"), including attachments to that
`Request.
`
`7.
`
`In this Declaration, I have been asked to address: (i) the expectations a person of ordinary
`
`skill in the art would have had in early April of 1983 regarding production of an
`
`immunoglobulin by transforming a single host cell with exogenous DNA sequences
`
`encoding both immunoglobulin chains; (ii) the comments made by the PTO in the Second
`
`Office Action regarding three scientific publications relating to expression of exogenous
`
`light chain genes in lymphoid cells, specifically the 1982 PNAS paper that I co-authored
`
`with Dr. David Baltimore in 1982, Ochi, and Oi; (iii) additional comments set forth in the
`
`Second Office Action concerning various other references; and (iv) the Declaration
`
`signed by Dr. Baltimore that was included with the Second Request for Reexamination.
`
`EVID~A~ENDIX
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`CONTROL NOS. 90/007,542 AND 90/007,859
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`
`DOCKET NOS. 22338-10230 AND -10231
`
`8.
`
`The analysis I provided in my earlier Declaration, and the analysis provided in this
`
`Declaration, reflect the views I believe a person of ordinary skill in the art would have
`
`had in early April of 1983. I believe that a person of ordinary skill in the art in the fit?ld
`
`of the '415 patent as of early April of 1983 would have the following qualifications: a
`
`Ph.D. in molecular biology or a related field, and about two years of post-doctoral
`
`experience in a lab working with recombinant DNA.
`
`Observations on the Expectations of a Person of Ordinary Skill in Early April of 1983
`
`9.
`
`The Second Office Action contains a number of statements concerning what the PTO
`
`believes a person of ordinary skill in the art would have reasonably expected in early
`
`April of 1983 based on findings we reported in our 1982 PNAS paper and other
`
`publications from that time frame, including the Ochi and Oi references.
`
`10.
`
`As an initial comment, I believe individuals working in this field would not have
`
`considered these three papers in isolation. Instead, they would have also considered what
`
`was known in early April of 1983 about how 8-lymphocytes produce immunoglobulins.
`
`In particular, their expectations would have been shaped by numerous reports in the
`
`literature documenting the types of factors that affect the ability of 8-lymphocytes to
`
`produce immunoglobulins.
`
`11.
`
`B-lymphocytes are specialized cells that have the specific function of producing
`
`immunoglobulins. They derive from precursor cells, called "pre-8" cells, found in bone
`
`marrow and fetal liver. 8-lymphocytes undergo a characteristic sequence of development
`
`and maturation, resulting in the terminally developed circulating 8-lymphocyte (which is
`
`called a plasma or memory 8-lymphocyte) found in the bloodstream. Only the
`
`circulating B-lymphocyte produces and secretes intact immunoglobulin tetramers in
`
`significant quantities.
`
`12.
`
`The process of immunoglobulin gene assembly and expression is complex and unique.
`
`Immunoglobulin genes are assembled from discrete immunoglobulin gene fragments
`
`during the process of maturation of the 8-lymphocyte. See, e.g., Bracket a/., Ce/115:1-
`
`14 (1978) (attached as Exhibit A). The timing of expression of the individual
`
`EVID~ APPENDIX
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`DOCKET NOS. 22338-10230 AND -10231
`
`immunoglobulin genes is also linked to the stage of development of the B-lymphocyte.
`
`For example, the heavy and light chain genes are expressed at different points in time
`
`during the development and maturation of the B-lymphocyte. See, e.g., Siden et al.,
`
`PNAS 78:1823-7 (March 1981) (attached as Exhibit B).
`
`13.
`
`Although all of this was known by early April of 1983, the processes that control
`
`immunoglobulin gene rearrangement and expression were not understood at that time, as
`
`we indicated in our 1982 PNAS paper (see, page 7862, left column). The unusual
`
`complexity of this system would have caused a person of ordinary skill in the art at that
`
`time to question whether one could achieve successful expression of exogenous light and
`
`heavy chain DNA sequences in a B-lymphocyte without disrupting the ability of that cell
`
`to properly express the introduced sequences, or carry out post-transcriptional events,
`
`such as immunoglobulin polypeptide folding, assembly or secretion.
`
`14.
`
`Similarly, the processes governing immunoglobulin assembly and secretion in B(cid:173)
`
`lymphocytes were not understood in April of 1983. Instead, it was known from studies
`
`involving cultures of B-lymphocyte cells, such as hybridomas or myeloma lines, that
`
`production and secretion of intact immunoglobulin tetramers were subject to many
`
`unknown and uncharacterized variables. For example, at that time there were numerous
`
`reports in the literature of hybridoma and myeloma cell lines that, during the passage of
`
`these cell lines over time, spontaneously lost the ability to express their immunoglobulin
`
`genes, produce individual heavy or light chains, or secrete immunoglobulin tetramers.
`
`See, e.g., Coffino et al., PNAS 68:219-223 (1971) (attached as Exhibit C). Some
`
`researchers also reported that excess amounts of free heavy chain in mutant hybridoma
`
`lines often was toxic to these cell lines. See, Kohler, PNAS 77:2197-2199 (1980)
`
`(attached as Exhibit D). Excess free heavy chain can result from loss of the light chain
`
`gene, inadequate expression of the light chain gene or imbalances in amounts of the
`
`individual immunoglobulin chains caused by factors in the cellular environment.
`
`15.
`
`In light of these observations, a person of ordinary skill in early April of 1983 would
`
`have assumed that the expression, production, assembly and secretion of
`
`immunoglobulins were dependent on the unique transcriptional machinery and other
`
`EVID~ APPENDIX
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`
`DOCKET NOS. 22338-10230 AND -10231
`
`cellular agents found in the B-lymphocytes that produce immunoglobulins. This was
`
`consistent with reports in the literature that suggested that specialized proteins may be
`
`involved in the control of expression of immunoglobulin genes, and possibly in the
`
`assembly and secretion of immunoglobulin. See, e.g, Wahl eta!., PNAS 79:6976-6978
`
`(1982) (attached as Exhibit E). A person of ordinary skill also would have assumed that
`
`other types of differentiated cells do not possess these unique attributes and capabilities,
`
`because other types of differentiated cells do not produce immunoglobulins.
`
`16.
`
`As a result, in early April of 1983, I believe a person of ordinary skill in the art who was
`
`familiar with the scientific literature would have expected that the ability of a transfected
`
`B-lymphocyte cell (or for that matter any other type of cell) to produce immunoglobulin
`
`tetramer would depend on several known and unknown but interrelated factors: (i)
`
`whether the immunoglobulin genes had been properly assembled in the cell, (ii) the
`
`timing and levels of expression of the light and heavy chain genes, (iii) the state of
`
`development of the cell, (iv) the amounts of the free light and heavy chain polypeptide
`
`proteins produced by and present in the cell, and (v) the presence ofthe appropriate
`
`translational machinery and various "helper" agents that are found in native B(cid:173)
`
`lymphocytes that produce immunoglobulins.
`
`17.
`
`The three publications reporting successful expression of a light chain gene in lymphoid
`
`cells (i.e., our 1982 PNAS article, the Ochi article and the Oi article) described useful
`
`techniques for exploring the mechanisms governing immunoglobulin gene expression.
`
`These publications, however, did not answer the questions that existed in early April of
`
`1983 about how B-lymphocyte cells arrange or express immunoglobulin genes, regulate
`
`the production of the light and heavy chains, assemble the chains into immunoglobulin
`
`tetramers, or ultimately secrete functional immunoglobulins. In my opinion, the
`
`constrained experimental design of these experiments and the limited results they
`
`reported would not have created the general expectations that the PTO has suggested.
`
`18.
`
`Each of these publications documents efforts to introduce a functionally rearranged light
`
`chain gene into differentiated cell lines of the B-lymphocyte lineage. Most of the cell
`
`lines used also had previously produced both chains, but had lost the capacity to produce
`
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`
`DOCKET NOS. 22338-10230 AND -10231
`
`one of the chains. 1 The likely motivation for using mutated versions of mature B(cid:173)
`
`lymphocyte cell lines was to increase the likelihood that these cell lines possessed
`
`whatever unknown cellular machinery was necessary to enable the cell to express the
`
`introduced light chain gene, and produce an immunoglobulin protein.
`
`19.
`
`For example, in our experiments, we chose to use a cell line (81A-2) which had lost its
`
`light chain gene. Our hope was that by introducing a functionally rearranged light chain
`
`gene, we would restore light chain production. We did not know, but had hoped, that the
`
`only reason the 81A-2 cells were not producing their light chain was because the cells
`
`had lost their endogenous light chain gene and that they had not lost factors that enable
`
`mature B-lymphocytes to produce immunoglobulin proteins.
`
`20.
`
`Our observations in the 1982 PNASpaper also reflect how little was known about the
`
`factors that regulate expression of immunoglobulin genes in lymphoid cells. For
`
`example, we suggested that our rearranged light chain gene likely contained
`
`uncharacterized regulatory elements that contributed to the successful expression of the
`
`introduced gene by the 81A-2 cell line. See, page 7865. We also hypothesized that
`
`"transcription of the light chain gene is controlled by a product ofthe heavy chain locus."
`
`The fact that we were posing questions about what mechanisms controlled expression of
`
`the exogenous light chain gene is a significant fact that would have affected the
`
`expectations of those of ordinary skill who were reading our paper.
`
`21.
`
`The Ochi group, as they reported in their paper, used a cell line that was already
`
`producing an endogenous light chain protein. Their experimental design removed even ·
`
`more uncertainty regarding their host cell than our experiments. Specifically, their host
`
`cell obviously had not lost whatever cellular factors enable B-lymphocytes to produce
`
`immunoglobulin chain proteins because their host cell was already producing both
`
`endogenous heavy and endogenous light chain protein.
`
`The Oi publication reports on unsuccessful attempts to transfect and express a light chain
`gene in a rat myeloma cell line and a mouse thymoma line. A thymoma line, in particular, is
`a thymus tissue derived tumor cell line comprised ofT-lymphocytes.
`
`EVID~ APIPENDIX
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`REEXAMINATION CONTROL NOS. 90/007,542 AND 90/007,859
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`DOCKET NOS. 22338-10230 AND -10231
`
`22.
`
`The Oi authors reported, among other things, varying success in transfecting and
`
`achieving expression of their introduced light chain gene. The Oi paper described the
`
`transformation of four cell lines: J558L (a myeloma cell that had spontaneously lost its
`
`heavy chain expression, but continued to express its endogenous light chain gene); 27-44
`
`(a mouse hybridoma cell that was already expressing immunoglobulins); Y3 (a rat
`
`myeloma cell that expressed only an endogenous light chain gene); and BW5147 (a
`
`mouse thymoma cell).
`
`23.
`
`At page 827, Oi reported that they had failed to achieve measurable light chain gene
`
`expression in either the Y3 or the BW5147 cell line, despite numerous attempts. At page
`
`829, the authors noted that "[t]he lack of production of mouse immunoglobulin in a rat
`
`myeloma is surprising because mouse myelomas have been used to fuse to rat myelomas
`
`to produce hybrid cells that synthesize both rat and mouse immunoglobulin molecules."
`
`They also observed that "[i]t is important to determine if immunoglobulin gene
`
`expression in the nonexpressing mouse thymoma and rat myeloma cell lines is regulated
`
`at the level of transcription, RNA processing, translation, or rapid protein turnover."
`
`These statements reflect the complexity and lack of understanding of immunoglobulin
`
`gene expression that existed at the time.
`
`24.
`
`The Oi paper also reports varying levels of expression in the cell lines that were
`
`expressing the light chain gene. See, page 828 ("Different amounts of S 107 light chains
`
`were produced when a number of independent J558L and 27-44 transformants were
`
`compared. Amounts varied from barely detectable to quantities equal to endogenous
`
`light chain."). The Ochi group similarly reported abnormal levels of expression of their
`
`introduced light chain gene (i.e., expression in their line R31 L4 was at a level only one
`
`tenth of that observed in the parental line).
`
`25.
`
`These reports of varying and abnormal levels of expression would have affected the
`
`expectations of a person of ordinary skill in the art in early April of 1983. As I explained
`
`above, such a person at that time would have expected that successful production of an
`
`immunoglobulin tetramer in a B-lymphocyte would depend on, among other things, the
`
`timing and levels of expression of the immunoglobulin gene, as this would affect how
`
`EVID~A~ENDIX
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`DOCKET NOS. 22338-10230 AND -10231
`
`much heavy and light chain protein would be produced by and present in the cell. The
`
`Ochi and Oi papers, however, reported unexplained variations in expression levels of the
`
`introduced genes? These papers provided no information on factors that could control
`
`the levels of expression of the introduced light chain gene, which would have been an
`
`important variable to control if one were attempting to ·extend these experiments to
`
`production in a single cell of two exogenous immunoglobulin genes.
`
`26.
`
`Accordingly, I do not believe a person of ordinary skill would have extended the limited
`
`experimental results in these three papers in the way the PTO suggests at pages 23-26 and
`
`34-35 ofthe Second Office Action. Specifically, I do not believe the 1982 PNAS, Ochi
`
`and Oi papers would have led a person of ordinary skill in the art to expect that
`
`introducing heavy and light chain genes into a B-lymphocyte cell line would result in
`
`successful expression ofthe genes, or production and secretion of intact, properly formed
`
`immunoglobulin tetramers. In my opinion, these papers certainly would not have led
`
`such a person to reach an even more aggressive scientific prediction; namely, that any
`
`host cell transformed with exogenous DNA sequences encoding heavy and light chain
`
`polypeptides would reasonably be expected to successfully express the introduced
`
`sequences, and produce properly formed immunoglobulin tetramers.
`
`Observations on the PTO's Characterization ofthe 1982 PNAS Paper
`
`27.
`
`At the first full paragraph on page 23 of the Office Action, the PTO states that "Rice
`
`demonstrates the successful expression of both heavy and light chains in a host with
`
`subsequent assembly into immunoglobulins." I disagree for the following reasons.
`
`28.
`
`The PTO fails to make a critical distinction between the normal continued expression of
`
`an endogenous heavy chain gene by this cell line and the introduction and "successful
`
`expression" of the functionally rearranged exogenous light chain gene that was described
`
`in the paper. The "success" in our work was the introduction and subsequent expression
`
`of the exogenous light chain gene. We did not introduce a heavy chain gene into the cell.
`
`We also made no effort to specifically control expression of the endogenous heavy chain
`
`2 Our PNAS paper did not report expression levels, but we observed variable levels of
`immunoglobulin chain expression by the transfected cells.
`
`EVID~A~ENDIX
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`
`gene (other than by providing a general cellular transcriptional stimulus via incubation of
`
`the transfected cells with lipopolysaccharide) (see, page 7865).
`
`29.
`
`I do not believe a person of ordinary skill in the art in early April of 1983 would have
`
`considered our observation in the 1982 PNAS paper that the 81A-2 cell line continued its
`
`expression of its endogenous heavy chain gene to be relevant to the question of whether
`
`one could achieve expression of an introduced heavy chain gene and an introduced light
`
`chain gene. In fact, even by early April of 1983, I was not aware of any experiments in
`
`the scientific literature where expression of an exogenous heavy chain gene had been
`
`demonstrated in a stably transformed lymphoid cell line.
`
`30.
`
`Thus, I do not believe a person of ordinary skill in the art, based on the findings and
`
`observations in our 1982 PNAS paper, would have concluded that "it would be reasonable
`
`... to expect that expressing a light and heavy chain of the same antigen specificity ... in
`
`a competent host would result in assembly of a functional antibody." (See, Second Office
`
`Action, page 35).
`
`31.
`
`One reason for my belief is that our experiments were conducted using a specialized B(cid:173)
`
`lymphocyte cell-line that had previously expressed both heavy and light chain genes,
`
`which subsequently had lost its light chain gene, and therefore was "poised" to express an
`
`introduced exogenous light chain gene. This constrained experimental setting would not
`
`create any expectations in the mind of a person of ordinary skill in the art in early April
`
`of 1983, other than that it would be possible to reintroduce a particular genetic expression
`
`capacity that the cell once possessed.
`
`32.
`
`Second, as I previously explained, the 1982 PNAS paper does not discuss, much less
`
`suggest, extension of the research we did to techniques for expression of DNA sequences
`
`encoding exogenous heavy and exogenous light chain genes. It also did not discuss
`
`production of the properly assembled immunoglobulins from the expression products of
`
`two exogenous genes, or the production of immunoglobulin tetramers in such a system.
`
`If the work we performed had had this significance, we certainly would have made some
`
`observation in our paper pointing this out.
`
`EVID~AIP-f2ENDIX
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`
`Observations on the Ochi Publicationl
`
`33.
`
`Like our 1982 PNAS paper, the Ochi and Oi papers were significant contributions to the
`
`field of molecular biology and immunology. To suggest, however, that these papers
`
`made routine either the coexpression of exogenous heavy and light chain DNA sequences
`
`in the same cell or the assembly of their protein products into an immunoglobulin is
`
`inaccurate and ignores the state of knowledge that existed, or the expectations individuals
`
`working in this field would have had, in early April of 1983.
`
`34.
`
`Ochi used a cell line (igk-14) derived from a hybridoma that originally expressed an
`
`endogenous heavy chain and light chain gene for an anti-TNP antibody, and produced a
`
`functional anti-TNP antibody. The igk-14 hybridoma had lost its ability to express its
`
`anti-TNP light chain gene but was expressing its other light chain gene (i.e., the gene
`
`which originated with the fusion partner of the B-lymphocyte that was the source of the
`
`anti-TNP immunoglobulin chain genes). Ochi reintroduced a copy ofthe anti-TNP
`
`antibody light chain gene into the igk-14 cell line, and observed that it was able to
`
`recommence expression of the anti-TNP light chain gene.
`
`35.
`
`The cell line used by Ochi was an ideal cell line to use in their experiment. The
`
`experiment was designed to see if it was possible to reintroduce and express the light
`
`chain anti-TNP gene. There was some expectation this would work, given that the
`
`parental line ofthe igk-14line previously expressed its anti-TNP light chain gene and
`
`produced the anti-TNP antibody. If this anti-TNP light chain were to be faithfully
`
`expressed in any cell line, one would have expected it to be the cell line used by Ochi.
`
`36.
`
`Despite this fact, the authors reported at page 341, first column, that the expression of an
`
`introduced immunoglobulin gene was unpredictably variable. For example, they
`
`observed that the level of expression of the reintroduced light chain gene was less than
`
`the level of expression of the native light chain gene in the parental cell line. (See page
`
`341, first column.) They also indicated that some cells which contained fewer copies of
`
`the reintroduced light chain gene actually produced higher levels of anti-TNP antibody
`
`3 The PTO only made comments on the Ochi paper so I have limited my comments to this
`publication, and am not including separate comments on the Oi publication.
`
`EVID~ A~ENDIX
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`DOCKET NOS. 22338-10230 AND -10231
`
`than cells that contained more copies of the gene. These results led the authors to
`
`question "whether all the regulatory elements of the normal KTNP gene are present or
`
`functioning on the cloned fragment."
`
`3 7.
`
`Even though the experimental design of the Ochi work seems relatively straightforward
`
`in hindsight (i.e., restoring lost expression of a light chain gene), their results were
`
`considered significant enough to be published in Nature, which at the time was, and still
`
`is, considered to be one of the most prestigious peer-reviewed scientific journals in the
`
`world. This shows how non-routine expression of even a single exogenous
`
`immunoglobulin gene was in early April of 1983.
`
`Observations on the Combination of the '567 Patent Claims and Various References
`
`38.
`
`The Second Office Action states that our 1982 PNAS paper would have suggested to a
`
`person of ordinary skill in the art that they modify the process defined by the claims of
`
`the '567 patent, when our paper is considered in view ofthe Dallas reference, and
`
`considered further in view of the Ochi publication. I do not agree.
`
`39.
`
`The '567 patent claims refer to production of either the heavy or the light
`immunoglobulin chain polypeptide.4 It specifies transforming a host cell with a DNA
`sequence encoding the desired heavy or light chain polypeptide, culturing the host cell
`
`and isolating the heavy or light chain that is produced. The '567 patent claims do not
`
`require or refer to production of both heavy and light chain polypeptides in a single
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`transformed host cell.
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`40.
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`I do not believe the experimental work we described in our 1982 PNAS paper would have
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`altered any of the views of a person of ordinary skill in the art about the '567 patent
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`claims. In a general sense, our paper describes a process that appears to be comparable to
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`the '567 patent claims; namely, insertion and expression of an exogenous DNA sequence
`
`encoding one -- not two -- of the immunoglobulin chains. As I explained, our paper did
`
`4
`
`I note that claim 1 of the '567 patent requires that the introduced heavy or light chain DNA
`sequence be "chimeric." The functionally rearranged light chain gene we used was not.
`chimeric.
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`REEXAMINATION CONTROL NOS. 90/007,S42 AND 90/007,859
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`DOCKET NOS. 22338-10230 AND -10231
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`not describe a process where exogenous heavy and exogenous light chain genes were
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`introduced into a single host cell. We only inserted and observed expression of one
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`exogenous DNA sequence (i.e., the functionally rearranged light chain gene) into the
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`81A-2 cell line. I also do not believe a person of ordinary skill would consider the
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`continued expression of an endogenous heavy chain gene by the 81 A-2 cell line to be a
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`process that is comparable to the processes defined by the '567 patent claims, all of
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`which require insertion of an exogenous DNA sequence.
`
`41.
`
`The Dallas reference describes processes for inserting and expressing bacterial genes into
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`an E. coli cell. Two of the examples illustrate techniques for inserting two bacterial
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`genes into the E. coli cell. Example III describes a process where an E. coli cell was
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`transformed with two distinct plasmids, each containing a bacterial protein antigen gene
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`and a marker gene. Example IV describes a process where one plasmid containing two
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`distinct bacterial genes, along with a marker gene that conferred resistance to
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`chloramphenicol, is inserted into an E. coli cell. These two examples report successful
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`expression of the inserted sequences, but also observe that the cells transformed with two
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`plasmids were either unstable (Example III) or expressed the genes at levels lower than
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`levels observed in individually transformed E. coli cells (Example IV).
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`42.
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`I do not believe the Dallas reference would have resolved any of the questions and issues
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`that I described concerning our 1982 P NAS paper. This is because the Dallas work
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`concerns expression of bacterial genes in bacterial cells, not expression of eukaryotic
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`genes in bacterial cells. The proteins that are produced by the Dallas E. coli cells are
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`apparently not secreted by or recovered from the host cells. The bacterial genes in Dallas
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`are much less complex than the eukaryotic immunoglobulin genes that are used in the
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`'567 and '415 patent claims because, for example, bacterial genes do not contain introns.
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`In addition, bacterial gene control elements and translational control elements were far
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`better characterized and understood in early 1983 relative to eukaryotic systems.
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`43.
`
`As such, I do not believe the Dallas publication would have changed any of the views of
`
`a person of ordinary skill in the art as to what was taught or suggested by the '567 patent
`
`claims and our 1982 PNAS paper.
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`DOCKET NOS. 22338-10230 AND -10231
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`44.
`
`As I explained above, the Ochi and Oi papers describe experiments that were very
`
`comparable in their design to the experiments we described in our 1982 P NAS paper. I
`
`do not believe either of these publications adds any additional insight that would have
`
`been relevant to an effort to produce exogenous heavy and light chain polypeptides in a
`
`single transformed host cell in early April of 1983. Also as I explained, neither of these
`
`publications would have changed the expectations of a person of ordinary skill in the art
`
`as to whether such an experiment would have succeeded or not.
`
`45.
`
`I do not believe the frog oocyte models discussed in the Deacon, Valle/, and Valle II
`
`papers provide relevant insights into the processes described in the '415 and '567 patent
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`claims. Xenopus oocytes are unfertilized frog eggs that exhibit an unusual ability to
`
`express foreign mRNA injected into the cells. A person of ordinary skill in the art in
`
`April of 1983 working in the field of recombinant DNA and immunology would not
`
`consider the oocyte mode.l as representative of what might happen if an exogenous heavy
`
`chain gene and an exogenous light gene (not mRNA) were inserted into a stable
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`replicating cell line.
`
`Observations on the Baltimore Declaration
`
`46.
`
`In February of 1981, I joined the laboratory of Dr. Baltimore as a post-doctoral fellow. I
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`was excited to be accepted into Dr. Baltimore's lab because he was (and still is) one of
`
`the most famous molecular biologists in the world. At the time, his lab at the M.I.T.
`
`Center for Cancer Research was conducting ground-breaking work in the fields of
`
`virology and immunology.
`
`47.
`
`The primary focus of my work in Dr. Baltimore's lab was immunoglobulin gene
`
`regulation in a lymphoid cell line. The work that I performed led to the 1982 PNAS
`
`paper. I provided a summary ofthe background of that work in my earlier Declaration.
`
`48.
`
`I do not believe that Dr. Baltimore was a person of "ordinary skill in the art" in the 1982-
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`1983 time frame. Dr. Baltimore had received the Nobel Prize in Physiology or Medicine
`
`in 1975, only 11 years after receiving his Ph.D.- a remarkable accomplishment. By
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`1982, Dr. Baltimore had achieved preeminence in the fields ofbiology and biochemistry
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`and was a full professor at the Massachusetts Institute of Technology. Indeed, Dr.
`
`Baltimore was the reason I elected to perform my post-doctoral research at M.I.T.
`
`49.
`
`I believe that the conclusions reported in the 1982 PNAS paper and in Dr. Baltimore's
`
`Declaration are attributable to his special knowledge and insights into the biology of our
`
`experimental system.
`
`50.
`
`In paragraph 5 of his Declaration, Dr. Baltimore states:
`
`We did not perform further experiments to demonstrate that two
`exogenous chains of a known antibody or one exogenous and one
`endogenous chain