lacking from the claim language of Harari claims 63 and 64 is a requirement that the conversion
act to prolong the life of the memory.
Yamagami argues that we misapprehended or overlooked statements made by Kimura
and arguments advanced by Yamagami in its preliminary motion 1 that “it is inherently obvious
that undue experimentation (although this term is not specifically used) would be required to
practice the apparatus as disclosed in the Harari specification ...” (Recon. 5). As stated above,
Yamagami does not, in the argument section of Yamagami preliminary motion 1, direct our
attention to any passage in the Kimura declaration. Yamagami cannot now direct us to passages
in the Kimura declaration with the hopes that we will consider those passages. It is too late.
Consideration of such evidence would be prejudicial to Harari. In any event, it is not enough to
allege, or for a declarant to state that experimentation would be required to practice an invention,
or even that undue experimentation would be required without sufficient supporting evidence to
back up the argument or statement.
Yamagami argues that we erred in not giving deference to the examiner’s determination
that Yamagami’s claims were patentable over the subject matter of “the European patent
application” and Holzhammer (Recon. at 5). We are not bound by decisions made by an
examiner during ex parte prosecution. During an interference, independent review of issues are
made. See Glaxo Wellcome, Inc. v. Cabilly, 56 USPQ2d 1983, 1984 (BPAI (ITS)). (Neither the
Board nor a party are bound by an ex parte decision made during prosecution by another party.
A motion in an interference is not an appeal from the examiner's decision, but an independent
request to the Board). Accordingly, we did not overlook the examiner’s determination made
during ex parte prosecution of the Yamagami involved patent. Instead, we reviewed Harari
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