Interference 103,579
determination that claims drawn to compounds are independent
and distinct from claims directed to processes of using said
compounds for purposes of restriction under 37 CFR § 1.142 as
sole basis for a holding that the claims of Hofvander’s involved
application and the claims of Visser’s involved application are
directed to the separate patentable inventions from any of the
process claims of Hofvander’s patent is legally incorrect absent
a comprehensive fact-specific analysis. See In re Ochiai,
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995):
The use of per se rules, while undoubtedly less
laborious than a searching comparison of the claimed
invention – including all its limitations - with the
teachings of the prior art, flouts section 103 and the
fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims
and prior art may be administratively convenient . . . .
But, reliance on per se rules of obviousness is legally
incorrect . . . . Any such administrative convenience
is simply inconsistent with section 103 . . . .
We observe that Visser’s § 1.642 request subsumes the main
issue raised by its § 1.633(b) motion. 37 CFR § 1.642 reads:
During the pendency of an interference, if
the administrative patent judge becomes aware of an
application or a patent not involved in the interference
which claims the same patentable invention as a count
in the interference, the administrative patent judge may
add the application or patent to the interference on such
terms as may be fair to all parties.
Accordingly, should we conclude that no claim of Hofvander’s
involved application is directed to the same patentable invention
as a claim of Visser’s involved application, Visser’s § 1.642
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