Interference No. 105,058
Schaenzer v. Knight
21. Also in the telephone conference held on August 20, 2003, counsel for the junior
party asked the APJ where in the interference rules is a requirement that the moving party shall
bear the burden of proof. The APJ directed counsel's attention to 37 CFR § 1.637(a). See
Summary of Telephone Conference - Paper No. 34.
22. At the conclusion of the telephone conference on August 10, 2003, the APJ
authorized the parties to re-file theirjoint preliminary motion I as ajoint preliminary motion 3 to
eliminate the deficiencies articulated by the motions panel in the decision on joint preliminary
motion 1, provided however, that the parties will acknowledge (See Summary of Telephone
Conference - Paper No. 34):
(1) that they are charged with the burden of proof under 37 CFR §
1.637(a),
(2) the requirement of 37 CFR § 1.637(c)(4)(ii) to make a showing that
claims 3-9 are not directed to the same patentable invention as any other claim
(meaning all claims) whose correspondence to the count is not in dispute,
(3) that mere counsel's argument does not constitute evidence, and
(4) that the motion has to be based on evidence, e.g., testimony from one
with ordinary skill in the art with regard to factual inquiries for an obviousness
determination [for instance, if any feature is deemed patentably significant, there
should be testimony regarding the state of ordinary skill in the art in connection
with that feature, e.g., to what extent is that feature known by one with ordinary
skill in the art];
23. Counsel for both parties accepted the condition set by the APJ and re-filed their
preliminary motion 1 as preliminary motion 3, to fix the deficiencies noted in our decision on
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