Interference No. 103,605
not bound by any statements made in the examiner’s Initial
Memorandum (AR-00144).
As for the qualifications of Dr. Matsushima, we find that
Dr. Matsushima is qualified as an expert witness for the reasons
given by Yamada (YB 14-15).11 Indeed, Aggarwal’s case for
unpatentability appears to depend, in part, on testimony elicited
from Dr. Matsushima. (AB 16-24, 26-27, 43-45, 51-54, 56).
Therefore, it appears somewhat incongruous, to say the least, for
Aggarwal to insist that Matsushima’s testimony is not entitled to
any weight.
Continuing, we additionally find that it would be improper
to combine teachings from separate priority documents, in
determining whether the description requirement of 35 U.S.C.
§ 112 has been met, for the reasons given by Aggarwal (ARB-19).
In particular, we are unaware of any legal precedent for doing
so, and Yamada has not cited any. Moreover, the pertinent
sections of the patent statute, 35 U.S.C. § 119(a) and 35 U.S.C.
§ 119(c), both appear to require that a claimed invention must
be described in a single earlier-filed application, i.e., either
11 By analogy to our role as the trier of fact, it is within
our discretion to admit the testimony of an expert. Kumho Tire
Co. v. Carmichael, ___U.S. ___, 131 F.3d 1433, 50 USPQ2d 1177
(1999).
10
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