Interference No. 103,272
of the Kasha Index measurement procedure and apparatus. We decline to consider the
issue insofar as it raises matter (ii).
Matter (ii) concerns the party Okamoto's actions during ex parte prosecution
and in this interference. During ex parte prosecution, the examiner suspended further
prosecution of the Okamoto application due to a potential interference. When counsel for
the party Okamoto received notice of the suspension, he telephoned the examiner who
then told counsel that the claims of the Okamoto application defined its polymers in terms
of viscosity-average molecular weight whereas the other interfering application (the
involved Heuschen application) defined the polymers in terms of Kasha Index in
centiseconds at 250EC. See HX 14. In response to the examiner's telephone interview,
counsel requested from his client Okamoto information correlating the Kasha Index
measurements with molecular weight. The client supplied that information to counsel, who
in turn forwarded that information to the PTO in the correspondence (HX 14). The primary
examiner relied upon the information and permitted the Okamoto application to issue as
the involved patent.
The foregoing facts make clear to us that during ex parte prosecution the
party Okamoto represented to the examiner that it was able to, and did, correlate the
Kasha Index measurements with molecular weight. In this interference, the party Okamoto
is taking the position, contrary to that taken during ex parte prosecution, that it cannot
determine the Kasha Index measurements. We deem it improper for a party to take a
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