CHEN et al. V. HESTER et al. - Page 4


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            Interference No. 104,490                                                                 

            to file preliminary motions. See 37 C.F.R. § 1.633. However, in                          
            light of the Court's decision and the cancellation by operation                          
            of the statute of all Chen et al.'s claims designated as                                 
            corresponding to the count in this interference, we have the                             
            discretion not to decide those motions in view of this                                   
            proceeding's current posture.                                                            
                  Specifically, in Berman v. House , 291 F.3d 1345, 1351,                            
            1352, 63 USPQ2d 1023, 1027, 1028 (Fed. Cir, 2002), the court held                        
            that the Board has the discretionary authority to decide certain                         
            issues, "even after the Board determines that one party was not                          
            entitled to its claims." Here, all Chen et al.'s claims                                  
            designated as corresponding to the counts have been canceled by                          
            the statute ("A final judgment adverse to a patentee from which                          
            no appeal or other review has been or can be taken or had shall                          
            constitute cancellation of the claims involved in the patent, and                        
            notice of such cancellation shall be endorsed on copies of the                           
            patent distributed after such cancellation by the Patent and                             
            Trademark Office." See the last sentence of 35 U.S.C. § 135 (a).)                        
                  Therefore, because Chen et al.'s patent has no claims                              
            remaining therein after the issuance of the Court's decision and                         

            mandate, we decline to exercise our discretionary authority and,                         
            therefore, decline to consider any of Chen et al.'s preliminary                          
            motions in this proceeding. Accordingly, all Chen et al.'s                               
            preliminary motions are herein DISMISSED.                                                


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