Interference No. 103,141
separate patentable inventions under 37 CFR § 1.601(n) in
motion 1. See Sawada motion 1, Paper No. 12 at 25-26. Judge
Smith responded properly to this showing by substituting two
counts, each count including one of the orifice or orifice-
free species. Addition- ally, it appears from the record that
Judge Smith credited the
opposition of Jin, which argued that the cross-section
reduction with subsequent sintering species, and the sintering
with simultaneous or subsequent cross-section reduction
species were separate patentable inventions. However, it was
not incumbent upon Jin to make this showing. Jin does not
have the burden on this issue.
Sawada’s reliance on some kind of “essential common
elements” or “essential common subject matter” test (Sawada
Brief, at 9 and 11) does not reflect the proper test for same
patentable invention in interference law and only serves to
obscure the issue. The proper test for determining if the two
species in question are the same patentable invention is the
obviousness analysis of 37 CFR § 1.601(n). Likewise, Sawada’s
reliance (Sawada Brief at 12) on Example 16 of MPEP § 2309.01
17
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