Interference No. 103,036
it relates to reissue claims 13 to 16, 18 to 20, 22 to 33, 35 to
37 and 39 to 51.
In the motion, the party Cataldi et al. urges at CR
1688 and 1689 that the party Burroughs et al.'s reissue claims 13
to 51 are not directed to the same invention as its original
patent claims 1 to 11, because the party Burroughs et al. never
alleged at the time of presentation of the reissue claims that
reissue claims 13 to 51 are drawn to the same invention as the
invention defined by its original claims 1 to 11. According to
the party Cataldi et al., the party Burroughs et al.'s silence is
an implicit admission that its newly presented claims 13 to 51
are not drawn to the same invention as the invention defined by
its original claims 1 to 11. The party Cataldi et al. also notes
that the involved Burroughs et al. reissue application contains
claims 1 to 12 and 52 to 63 which have been designated as not
corresponding to the count.
On pages 163 and 164 of its main brief, counsel for the
party Cataldi et al. states that the CCPA and the Court for
Appeals for the Federal Circuit have both "waffled back and
forth" on what was originally called the "intent to claim"
requirement of 35 U.S.C. § 251 and "what the Federal Circuit's
latest effort in this field tells us is now to be called the
'original patent' requirement" of the statute. In support of its
position, counsel cites two lines of cases (In re Weiler, 790
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