would have been obvious to undertake the process described by
the Davey and Burg claims "at a relatively constant
temperature and without serial addition of reagents."
B. Discussion
An interference-in-fact exists when at least one claim
of a party that is designated to correspond to a count and at
least one claim of an opponent that is designated to
correspond to the count define the same patentable invention.
37 CFR § 1.601(j). Invention "A" is the same patentable
invention as an invention "B" when invention "A" is the same
as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention "B" assuming invention "B" is prior art with respect
to invention "A". Invention "A" is a separate patentable
invention with respect to invention "B" when invention "A" is
new (35 U.S.C. 102) and
non-obvious (35 U.S.C. 103) in view of invention "B" assuming
invention "B" is prior art with respect to invention "A".
37 CFR § 1.601(n). "Resolution of an interference-in-fact
issue involves a two-way patentability analysis." Winter v.
Fujita,
53 USPQ2d 1234, 1243 (BPAI 1999).
In the present circumstances, it was appropriate to
declare the interference since claim 11 of Davey and claim 1
5
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