Interference No. 103,830
URYNOWICZ, Administrative Patent Judge, additional views:
I agree with the decision of my colleagues to enter judgment on the issue of priority
against all of junior party Pacholok’s claims that correspond to counts 1 and 2, and I agree with
Administrative Patent Judge Lee that Hutmacher’s claim 23 is unpatentable under 35 U.S.C.
§ 112, first paragraph, on the ground that Hutmacher’s disclosure fails to provide written
description support fo r the claim’s requirement that the vehicle disabling device include “a
positioning means for placing the vehicle disabling device under the pursued vehicle.”
Nevertheless, concerning the issue of the patentability of Hutmacher claim 23, it is
disturbing that under the holding in Spina, the PTO, as represented by the primary examiner or
the Board in an appeal under 35 U.S.C. § 134, would have had to interpret the copied claim in
light of its originating disclosure when considering the claim’s patentability, whereas under
interference Rule 1.633(a), validated by the holding in Dror, the PTO, as represented by the
Board, construes the same claim in light of the specification in which it appears. Conceivably,
one approach might require a finding of claim patentability whereas the other approach might
require a finding that the same claim is unpatentable.
STANLEY M. URYNOWICZ, JR. ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
SMU:clm
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