Interference No. 103,272
reference contains no disclosure of any Kasha Index values or any molecular weight
ranges. Moreover, during ex parte prosecution, in the Office Action dated June 21, 1989
(Paper No. 7 of the involved Heuschen application), the examiner rejected the Heuschen
claims as being obvious over the Japanese reference and after considering Heuschen's
response (Paper No. 14, filed December 26, 1989) thereto, the examiner withdrew the
6
rejection . Nowhere has the party Okamoto shown where the examiner's action is
erroneous. Cf. Brown v. Bravet, 25 USPQ2d 1147, 1150 (Bd. Pat. App. & Int. 1992). Nor
would the party Okamoto have been able to do so. In its involved patent specification, the
party Okamoto made a showing of unexpected results with respect to its particular
polycarbonate molecular weight ranges. In our view, this showing would also inure to the
benefit of the party Heuschen, especially since both parties are claiming the same
invention, albeit in different terms. The party Okamoto does not urge that an interference-
in-fact does not exist, i.e., that the Okamoto claims are patentably distinct from the
Heuschen claims.
6
In this regard, we note that the Heuschen application claims were finally rejected on the
grounds of indefiniteness, that Heuschen filed an appeal to the Board of Patent Appeals and
Interferences, that a panel of the Board reversed the examiner’s rejection and did not enter any
new ground of rejection over the Japanese reference under 37 CFR § 1.692, as it could have,
and should have, done if the panel deemed that the claims were unpatentable over that
reference.
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