been designated as corresponding to Count 1. The reason the
prior art reference anticipates Katou claims 11-16, 20 and 25-
28 is because it describes a compound having the formula of
Katou claim 11 and Katou claim 19 wherein n is 10. The
reference does not purport to describe any compound having a
value other than n is 10.
The parties have agreed that a judgment should be entered
against both parties. Counsel for Katou agreed that a
judgment has to be entered with prejudice as to all claims
(because those claims cover compounds wherein n is 10).
Counsel for Katou believes, however, that a plausible argument
can be made that compounds wherein n is 9 or less and
compounds wherein n is 11 or more are patentably distinct from
compounds wherein n is 10. On that basis, counsel for Katou
requested entry of a judgment with prejudice as to compounds
wherein n is 10, but without prejudice to compounds wherein n
is 9 or less or n is 11 or more. In light of the fact that
Belko and the prior art reference describe only a compound
wherein n is 10 and the utility of the Belko compound and the
Katou compounds are entirely different, an opportunity should
be provided to Katou to establish before the primary examiner
the separate patentability of compounds wherein n is 9 or less
and compounds wherein n is 11 or more. Counsel for Belko has
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