Interference No. 103,357
qualification is not well-taken. Under 37 CFR § 1.651(c), four circumstances are listed under
which a party is entitled to take testimony at final hearing. Unless one of the four situations is
satisfied, a party is not entitled to take testimony. Owen has not carried its burden of
establishing that it satisfied one of the four conditions of the rule.
That the two cases relied on by the APJ may not have involved an order to show
cause is not controlling. Both cases are relied on for the proposition that a party filing a motion
for testimony with respect to a matter raised in a preliminary motion after the close of the
preliminary motion period must, in order to meet the good cause requirement of 37 CFR §
1.651(c)(4), show that evidence it intends to present was unavailable at the time it filed its
preliminary motion or opposition.
Owen’s Written Description:
We are of the opinion that the interlocutory order granting Phillips’ motion for
judgment on the ground that Owen’s claims corresponding to the count are not patentable to
Owen for lack of a written description of the invention under 35 U.S.C. § 112, first paragraph,
constitutes an abuse of discretion. Phillips provided no evidence with its motion charging that
the Owen specification does not contain a written description of the invention, and the manner
and process of making it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly connected, to make and use
the same, in support of its argument. Thus, the decision granting Phillips’ motion was based on
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