Interference No. 103,036
Issue 4A concerns the party Wang et al.’s miscellaneous
motion to compel the party Burroughs et al. to produce Messrs.
Burroughs and O’Kain for examination on their declaration which
was presented during ex parte prosecution and which is not being
relied upon by the party Burroughs et al. The motion is denied.
If a party believes that additional evidence in the
form of testimony, such as that of an opponent’s witness, is
necessary to support a preliminary motion, the party is required
by 37 CFR § 1.639(c) to describe the nature of the testimony as
specified by 37 CFR § 1.639(f). We fail to find where the party
Wang et al. asserts in any of its preliminary motion nos. 3 to 5
and 7 that the testimony of Messrs. Burroughs and O’Kain on their
ex parte Rule 132 declaration is necessary in order to decide
those preliminary motions or where the party Wang et al. made a
showing in accordance with 37 CFR § 1.639(c) and (f) in any of
those motions. Nowhere does the party Wang et al. state in its
miscellaneous motion that such a showing in accordance with
37 CFR § 1.639(c) and (f) was made in any of the preliminary
motions. It is not appropriate for a party filing a preliminary
motion, which does not state that the testimony of an opponent’s
witness is necessary to decide the motion, to now request the
testimony of the witness. Cf. Hanagan v. Kimura, 16 USPQ2d 1791,
1794 (Comm’r. Pats. 1990).
-15-
Page: Previous 150 151 152 153 154 155 156 157 158 159 160 161 162 163 164 Next
Last modified: November 3, 2007