SAWADA et al. V. JIN et al. - Page 18




          Interference No. 103,141                                                    



          (6th Ed., Jan. 1995) is misplaced.  The first sentence of the               
          Example 16 states, “The PTO will . . . declare interferences                
          where interfering patent and application claims are mutually                
          exclusive provided the claims define the same patentable                    
          invention.” (Citations omitted, emphasis supplied).  Indeed,                
          Example 14, which defines the conditions of Example 16,                     
          specifically states that, “[b]enzene and toluene [the two                   
          mutually exclusive species of Example 16] define the same                   
          patentable invention.”  Sawada has never established that the               
          two species in question are the same patentable invention.                  
                    Sawada argues that the junior party should not be                 
          penalized for disclosing both species in its involved                       
          application.  Sawada Brief at 12.  Sawada has not been so                   
          penalized.  In fact, since the sintering with simultaneous or               
          subsequent cross-section reduction species is not within the                
          interference, Sawada has possession of this subject matter                  
          free and clear of any interference with Jin.  This is the                   
          opposite   of Sawada’s perceived penalty.                                   
                    Finally, we agree that a count should ideally be                  
          formulated to allow a party to rely on its best proofs.                     


                                          18                                          





Page:  Previous  11  12  13  14  15  16  17  18  19  20  21  22  23  24  25  Next 

Last modified: November 3, 2007