Interference No. 103,732
"B" when invention "A" is new (35 U.S.C. § 102) and non-obvious (35 U.S.C. § 103) in
view of invention "B," assuming invention "B" is prior art with respect to invention "A."
In holding that an interference-in-fact did not exist, the APJ agreed with the
party Okamoto that the molecular weight range recited in its claims is critical and gives
unexpected results, i.e., optical disks having molecular weights below or above the range
recited in the party Okamoto’s claims did not possess a combination of the desired impact
strength and low birefrigence as shown by the data in the Tables found in columns 6 and 7
of the Okamoto patent. The party Silva did not challenge this data in any way.
In its brief, the party Silva et al. contends that the party Okamoto’s claims
define and embrace two different patentable inventions, whereas the two inventions were
made by different entities at General Electric, one by party Silva et al. (this interference)
and the other by Heuschen (Interference No. 103,272). This, however, is not considered a
reason for holding that an interference-in-fact exists.
As we noted above, the test for interference-in-fact is set forth in 37 CFR
§ 1.601(n). After considering the evidence, the APJ agreed with the party Okamoto that it
had made a sufficient showing, which the party Silva et al. does not dispute, that the party
Okamoto’s claims are novel and nonobvious over the party Silva et al.'s claims, assuming
that the party Silva et al.’s claims were prior art. Nowhere in the brief has the party Silva et
al. shown where the APJ’s decision constitutes an abuse of discretion.
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