David's motion asserted that, as the copier of claims, Engvall had the burden of showing
descriptive support for the copied subject matter by clear and convincing evidence. David’s motion
relied on Martin, Paper 32, pp. 9-10. Martin expressly holds:
It is . . . the copier of the claims . . . who has the burden of proving, by clear
and convincing evidence, "the disclosure on which he relies supports the
copied claims which became the interference counts." [Citations omitted.]
823 F.2d at 505, 3 USPQ2d at 1337. In granting David's motion the APJ agreed that the burden was
on Engvall to establish descriptive support for the limitation. Paper 77, pp. 5-6.
The Martin interference was an "old" rule interference. This interference is conducted under
the "new" rules. Section 1.638(a) of the new rules specifically require that oppositions to motions
"include an argument why the relief requested in the motion should be denied." Engvall's opposition
never challenged the assignment of the burden. Paper 39. Engvall's failure to raise the burden of
proof issue in the opposition to David's motion effectively waived the matter. The APJ could not
have made an error by failing to consider a matter which was not brought to his attention. See,
Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388, 9 USPQ2d 1736, 1738 (Fed. Cir.
1989) (prescience is not a required characteristic of the board and the board need not divine all
possible afterthoughts of counsel that might be asserted for the first time on appeal). However, in
view of the apparent confusion as to the proper burden of proof during the proceedings in this
interference, we have evaluated the issue de novo with the burden of proof on David as the moving
party. Kubota, 999 F.2d at 522, 27 USPQ2d at 1422; Behr, 27 USPQ2d at 1405. Thus, in order
for David to prevail on the motion, a preponderance of the evidence must show that the lower limit
of the affinity limitation is not supported by Engvall’s written description. In reaching our decision
on this issue, we have reviewed the parties’ motion papers (37 CFR § 1.655(a)), as well as the briefs
on the issue and the parties’ evidence relied upon.
C. Significance of the primary examiner’s decision that the affinity limitation was
inherent in Engvall example 1
Engvall asserts that the decision of the primary examiner that the affinity limitation is
supported by Engvall’s Example 1 is an interlocutory decision in this interference and under 37 CFR
§1.655(a) is presumptively correct. Thus, Engvall argues that “the Primary Examiner’s declaration
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