Interference No. 102,712
We find that Suzuki’s motion to designate its claims as
not corresponding to the count was properly denied essentially
for the reasons outlined in Augustine’s brief and reply brief.
Suzuki, as the moving party, bears the burden of persuasion as
to the relief sought. See Behr v. Talbott, 27 USPQ2d 1401,
1405 (Bd. Pat. App. & Int. 1992); Case v. CPC Int’l, Inc., 730
F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984), cert.
denied, 469 U.S. 872 (1984). The movant’s burden is to
establish that its involved claims do not define “the same
patentable invention” as any other claim designated as
corresponding to the count. 37 CFR § 1.637(c)(4)(ii). In
determining whether a particular claim or claims define “the
same patentable invention” as any other involved claim, a
question of obviousness arises within the purview of 35 U.S.C.
§ 103 with the assumption being made that the other involved
claims represent prior art with respect to the claim or claims
in question. 37 CFR § 1.601(n). It goes without saying that
any inquiry relating to the question of obviousness must also
necessarily involve an evaluation of any conventional prior
art within the purview of 35 U.S.C. § 102.
At the outset, we note that Suzuki’s brief refers to
matters which were not raised in its original preliminary
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