Interference No. 103,587
4. Whether Levien’s patent claim 25 is invalid under 35 U.S.C. § 112 and whether
Levien’s reissue claim 25 is invalid under 35 U.S.C. § 251.
Substitution of a New Count and Patentability
of Newly Amended Claims
On May 2, 2000, the Board issued a notice under 37 CFR § 1.641 to the party Katayama
that its corresponding claims 32-41 are unpatentable to it under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject matter which it
regards as its invention (Paper No. 95). In that notice, Levien was notified that its corresponding
patent and reissue claims 6, 9-11, 14, 15, 18-20 and 23 are unpatentable under 35 U.S.C. § 112,
second paragraph, on the same grounds.
In response to the notice, the parties filed a joint preliminary motion under 37 CFR
§ 1.633(c)(1) and (c)(2) on June 20, 2000 to substitute a count and to amend the claims (Paper
98). That part of the motion to substitute a count was filed to overcome the indefiniteness of
count 1. As noted above, count 1 corresponds exactly to Levien claim 6 and Katayama
claim 32, which claims the Board found indefinite in the notice under 37 CFR § 1.641. In the
motion, the parties agreed to present their respective proposals for a substitute count and to let
the Board decide without opposition which proposed count would be best for resolving the issues
in this interference. In order to overcome the rejections set forth in the Board’s notice, Katayama
amended its independent claims 32 and 37 (Appendix C to the joint preliminary motion), and
Levien amended its independent claims 6 and 15 (Appendix D to the joint preliminary motion).
The preliminary motion is denied to the extent Katayama seeks to substitute its proposed
count A for count 1; the motion is granted to the extent Levien seeks to substitute its proposed
count B for count 1 and to the extent that the parties seek to amend their claims. Proposed count
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