Interference No. 103,197
motion period, the parties were required to present all of
their evidence relevant to these counts during their testimony
periods and to address that evidence and those counts in their
briefs for this final hearing. Although Count 5 is
unpatentable over Kapany's Figure 7.16(b) apparatus when used
either for two-dimensional imaging of tissue or for
spectrophotometry (excluding oximetry) of tissue, it is not
necessary for us to determine what form an appropriate new
count or counts should take because, as will appear, Morrison
is not entitled to an award of priority even for a count as
broad as Count 5. Nor is a determination of a new count or
counts required so that an ex parte examiner, subsequent to
termination of this interference, can apply the principles of
res judicata, collateral estoppel, and interference estoppel
with respect to any added or amended claims of the losing
party. These determinations can be made with respect to the
losing party's lost claims. See In re Deckler, 977 F.2d 1449,
1453, 24 USPQ2d 1448, 1450 (Fed. Cir. 1992) ("Deckler was not
entitled to claims that were patentably indistinguishable from
the claim on which he lost the interference.").
G. The parties' positions on priority
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