Interference No. 103,141
(6th Ed., Jan. 1995) is misplaced. The first sentence of the
Example 16 states, “The PTO will . . . declare interferences
where interfering patent and application claims are mutually
exclusive provided the claims define the same patentable
invention.” (Citations omitted, emphasis supplied). Indeed,
Example 14, which defines the conditions of Example 16,
specifically states that, “[b]enzene and toluene [the two
mutually exclusive species of Example 16] define the same
patentable invention.” Sawada has never established that the
two species in question are the same patentable invention.
Sawada argues that the junior party should not be
penalized for disclosing both species in its involved
application. Sawada Brief at 12. Sawada has not been so
penalized. In fact, since the sintering with simultaneous or
subsequent cross-section reduction species is not within the
interference, Sawada has possession of this subject matter
free and clear of any interference with Jin. This is the
opposite of Sawada’s perceived penalty.
Finally, we agree that a count should ideally be
formulated to allow a party to rely on its best proofs.
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