Interference No. 103,036
Burroughs et al. specification does not have an adequate written
description for its claims 13 to 29, 33 to 40 and 43 to 51.
Abuse of Discretion--Issue (3)
Issue 3(i)
With respect to Issue 3(i), the party Tucholski urges
that the APJ should have allowed each party to present its
evidence (a) supporting all its preliminary motions, oppositions
and replies and (b) relating to priority at one final hearing and
that it is an abuse of discretion for the APJ to schedule two
final hearings, citing Espenschied v. Sykes v. Wier, 1929 Dec.
Comm’r Pats. 26 (1927) and Hewitt v. Weintraub v. Hewitt and
Rogers, 1907 Dec. Comm’r Pats. 155 (1907). These decisions hold
that in a multi-party interference, one final hearing should be
set to hear issues of "right to make" and priority of invention20
rather than bifurcating the interference to hear the right to
Prior to the adoption of the new rules, 37 CFR § 1.601 et20
seq., if a party to the interference did not have the "right to make"
its claim, i.e., if the party's involved application did not contain
a written description under 35 U.S.C. § 112, first paragraph, for its
claim corresponding to a count, the interference would be dissolved
as to that count and the party would not be heard on the question of
priority. See Fildes v. Williamson, 92 F.2d 914, 916, 35 USPQ 457,
459 (CCPA 1937).
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