Interference No. 103,272
For the foregoing reasons, we hold that the party Okamoto has failed to
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demonstrate an abuse of discretion in the granting of the party Heuschen's motion to
redefine by substituting count 2 for count 1.
Issue (2)
Since we consider that count 2 is patentable over the prior art, we need not
consider whether count 1 should be reinstated. Accordingly, this issue is dismissed as
moot.
ISSUE (3) - THE PARTY HEUSCHEN'S CASE FOR PRIORITY
The junior party Heuschen, whose application was copending with the party
Okamoto's application that issued as a patent, has the burden of proving priority of
invention by a preponderance of the evidence. Bosies v. Benedict, 27 F.3d at
541-42, 30 USPQ2d at 1864, and Peeler v. Miller, 535 F.2d 647, 651, 190 USPQ 117,
120 (CCPA 1976). For its case on priority, the party Heuschen relies upon actual
reduction to practice prior to the August 27, 1987 effective filing date of the senior party
Okamoto.
Witnesses testifying on behalf of the party Heuschen are Dr. Jean M.
Heuschen, one of the named co-inventors; and Messrs. Stephen M. Cooper, Robert J.
Ungetheim, Paul I. Hinderliter and H. Lowell Hess, corroborators, all of whom during the
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If we held count 2 to be unpatentable, which we do not, then we would necessarily agree
with the party Heuschen that we would have to reopen this interference to give the party
Heuschen an opportunity to present further proofs.
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