Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 18
11eliminate the distinction without a difference between present Counts 3 and 5"
(Paper 141 at 24-25). No further explanation is provided in the brief.
It is not clear which "arguments above" McDonald means. Again, it is not the
Board's responsibility to search the brief and record for potential arguments favorable to
McDonald's cause. Cf. Winner Int'l Royalty CoLp. v. Wang, 202 F.3d 1340, 1351,
53 USPQ2d 1580, 1589 (Fed. Cir. 2000) (refusing to "search the record on the chance
of discovering which witnesses Wang was complaining of and then determine whether
the district court abused its discretion,"). In the absence of a showing of error in the
earlier decision, we see no basis for changing the earlier decision at all.
[56] The earlier decisions (Paper 95 at 31 & Paper 106 at 7) explained that McDonald's
request for a count that would encompass TSF is inconsistent with his position during
prosecution of his involved claims that they were separately patentable from the prior
arl disclosure of TSF in McDonald's earlier (and not co-pending) 449 patent.
[57] The earlier motions decision also noted (Paper 95 at 31) that McDonald's involved
patent disclosed that C-terminal fragments are a different invention than N-terminal
fragments.
McDonald's arguments smack of trying to have it both ways. McDonald took the
position during the prosecution of its involved claims that they were separately
patentable from TSF and that the N-terminal and C-terminal fragments are separately
patentable from each other. Now that this position is inconvenient for the purpose of
establishing priority, McDonald dismisses all of the purported differences as
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