WANG V. TUCHOLSKI - Page 139




          Interference No. 103,036                                                    


          of written description.  The motion is denied for the reasons set           
          forth above in the denial of items 5, 6, 8, and 12, supra.                  
                    In summation, the Cataldi et al. motion no. 3 is denied           
          with respect to the Burroughs et al. patent claims 1 to 11 and              
          reissue claims 13 to 16, 18 to 20, 22 to 30, 32, 33, 35 to 37, 39           
          to 46, 48, 49 and 51 and is granted with respect to the Burroughs           
          et al. reissue claims 17, 21, 31, 34, 38, 47 and 50.  Judgment as           
          to these latter claims is deferred to the next final hearing,               
          since we do not enter a piecemeal judgment with respect to a                
          party.                                                                      
          Issue (5)                                                                   
                    The party Cataldi et al.'s opening brief requests that            
          we decide whether the party Burroughs et al.'s reissue claims 1             
          to 51 are unpatentable on the ground of double patenting, as                
          urged in motion no. 23.                                                     
                    The motion is dismissed as to reissue claims 1 to 11.             
          37 CFR § 1.633(a) authorizes a party to file a preliminary motion           
          for judgment against an opponent's claim designated to correspond           
          to a count.  Since reissue claims 1 to 11 have not been                     
          designated to correspond to count 1, these claims are not a part            
          of the interfering subject matter.  Perkins v. Kwon, 886 F.2d               
          325, 327, 12 USPQ2d 1308, 1310 (Fed. Cir. 1989) ("The                       
          implementing rules provide not only for the threshold                       
          determination under 37 C.F.R. § 1.603 or § 1.606 that the                   

                                        -62-                                          



Page:  Previous  132  133  134  135  136  137  138  139  140  141  142  143  144  145  146  Next 

Last modified: November 3, 2007