affinity limitation. Paper No.32, pp. 8-10. In addition, David asserted that affinity limitation was
not inherent in Engvall’s specification. Paper 32, pp. 10-15. Engvall opposed David’s motion,
arguing (1) that the affinity limitation was not material (Paper 39, pp.3-8); and (2) that the limitation
“at least 10 liters/mole” was inherent in the examples (Paper 39, pp. 12-20). Engvall stated “when8
a person skilled in the art repeats the examples, e.g. Example I, that person inevitably and necessarily
obtains monoclonal antibodies having an affinity of at least about 10 ." Paper 39, p. 14.8
3. The APJ’s decision on David’s preliminary motion
In granting David's motion the APJ stated:
As pointed out by David, the burden falls on the copier of a limitation to
establish the inherency of the limitation. The [APJ] agrees with David to the
extent he argues that neither Engvall nor Gallati have sustained this burden to
date.
Paper 77, pp. 5-6.
B. The burden of proof
Engvall’s reply brief for final hearing asserts that the APJ's decision was clearly erroneous
because the APJ incorrectly imposed the burden of proving descriptive support for the affinity
limitation on Engvall. Engvall Reply Brief., pp. 5-6. Engvall now challenges the placement of the
burden relying on Kubota v. Shibuya, 999 F.2d 517, 522, 27 USPQ2d 1418, 1422 (Fed. Cir. 1993),
and Behr v. Talbot, 27 USPQ2d 1401, 1405 (Bd. Pat. App. & Int. 1992). Kubota and Behr were
decided long after the APJ’s decision. These cases are relied upon for the proposition that under the
"new" interference rules the burden of proof is always on the moving party. This argument was45
raised for the first time in Engvall's Reply brief. We ordinarily do not consider such arguments. Suh
v. Hoefle, 23 USPQ2d 1321, 1323-24 (Bd. Pat. App. & Int. 1991). Cf. Kaufman Co. v. Lantech,
Inc., 807 F.2d 970, 973 n.*, 1 USPQ2d 1202, 1204 n.* (Fed. Cir. 1986) (courts normally do not
consider arguments made for the first time in reply briefs). However, because of unusual
circumstances of this case we will address the issue.
45
This interference was declared under the “new” rules promulgated December 12, 1984, and which
took effect, February 11, 1985. 49 Fed. Reg. 48416 (December 12, 1984) reprinted at 1050 Official Gazette 385
(January 29, 1985).
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