Interference No. 103,056
CFR § 1.644 (Paper No. 64) with respect to the final decision of the Board of Patent
Appeals and Interferences, wherein the Board held that Dean et al. patent and reissue
claims 8, 22 and 23 did not correspond to count 2 (Paper No. 62). In the petition,
Parker et al. alleged that Dean et al. failed to provide sufficient evidence in their 37 CFR
§ 1.633(c)(4) motion to gain the relief requested, that Parker et al. rebutted all of the
evidence/argument submitted by Dean et al. and lastly that the Board erroneously
placed the burden on Parker et al. to show that one of ordinary skill would have found
the claims sought to be undesignated obvious. The petition was granted to the extent
that the interference was remanded to the Board to treat the petition as a request for
reconsideration under 37 CFR § 1.658(b).
37 CFR § 1.658 requires that a request shall specify with particularity the points
believed to have been misapprehended or overlooked in rendering the decision. The
request seeks reconsideration of that part of the final decision wherein we found that
the APJ did not abuse her discretion when she granted the Dean et al. motion to
undesignate claims 8, 22 and 23 as not corresponding to count 2.
In the petition decision, the Board was reminded that a party filing a motion
“has the burden of proof to show that it is entitled to the relief sought in the motion.”
37 CFR § 1.637(a) cf. Kubota v. Shibuya, 999 F.2d 517, 520, 27 USPQ2d 1418, 1420
(Fed. Cir. 1993). Hence, the Board has been directed to decide anew “whether as to
Dean claims 8, 22 and 23, it was error for the APJ to conclude that, in view of the
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