of this interference and the decision that claims 8-27 are patentable to Engvall is an interlocutory
order which is presumed to be correct.” Reply brief, p. 4 (emphasis original).
Engvall’s assertion is simply wrong. Examiners do not declare interferences. Interferences
are declared by APJ’s. 37 CFR § 1.610(a). Thus, no interference exists until declared by an APJ,
and, manifestly, there can be no interlocutory order until an interference is declared. Our view is
consistent with 37 CFR § 1.601(q), which defines an interlocutory order as any action taken during
the interference, which is not a final decision, by an APJ or the Board, including the declaration of
the interference . Thus, any decision of the examiner holding Engvall’s claims patentable is not an
interlocutory order and does not have a presumption of correctness under 37 CFR §1.655(a).
In addition, decisions of a primary examiner during ex parte prosecution are likewise not
binding on the Board of Patent Appeals and Interferences in inter partes proceedings. See Bloch v.
Sze, 458 F.2d 137, 173 USPQ 498 (CCPA 1972) (Prior ex parte determination by the Board of
Appeals that the specification had written descriptive support for the claims was not binding on the
Board of Patent Interferences on the issue of right to make the claims). See also, Okada v.
Hitotsumachi, 16 USPQ2d 178, 1790-91 (Com’r Pat. 1990).
D. Finding on written description
After reviewing the evidence, we find that the lower limit for the affinity constant appearing
in Engvall’s claims 8 to 27 is not described in Engvall’s specification. Accordingly, we hold that
Engvall’s claims 8 to 27 are unpatentable under 35 U.S.C. § 112, ¶ 1.
E. Analysis
We have reviewed the motion papers (37 CFR § 1.655(a)) and hold that David’s motion
satisfied the burden. David's § 1.633(a) motion (Paper # 32, pp. 8-18) presents facts and reasoning
sufficient to make out a prima facie case of lack of a written description. David correctly pointed out
that express support for the affinity limitation was lacking in Engvall’s specification. Paper #32, pp.
8-10. A fact Engvall does not dispute. In addition, David’s motion addressed in detail why the
affinity limitation was not inherent in Engvall’s specification. David’s motion, therefore, provided
sufficient basis to find that Engvall’s involved application, prima facie, did not meet the description
requirement for the claimed subject matter. Our review of the record indicates that Engvall has failed
to rebut the prima facie case. Our reasons follow.
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