Interference No. 103,203
Versions 1 and 2 fail to disclose the best mode of practicing an invention within the scope
of Count 2. Paper No. 191, pp. 3-4.
Edgington et al. further argue that the Lawn et al. benefit application (Application
07/013,743) fails to provide written descriptive support for a species within the scope of
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proposed Count A (now, Count 2) and Count B. Id., pp. 5-16. Edgington et al. point to
various passages in the Lawn et al. specification for support of their argument.
We find these arguments lack merit.
With respect to the best mode issue, the burden of persuasion is on Edgington et
al. to establish that Lawn et al. knew that one mode of practicing the invention
corresponding to the count (now, Count 2) was better than another, and if so, they must
then establish that the earlier-filed applications would not have enabled one of ordinary skill
in the art to practice the best mode in making and using a species within the scope of
Count 2. Cf. Chemcast Corp. v. Arco Industries Corp., 913 F.2d 923, 927,
16 USPQ2d 1033, 1036 (Fed. Cir. 1990). With respect to the written description issue,
the burden of persuasion rests on Edgington et al. to establish that the Lawn et al. benefit
applications fail to provide an adequate written description of a species within the scope
of Count 2.
7Edgington et al.’s arguments with respect to Count B are moot in view of our decision to redeclare
the interference by substituting Count 1 with Count A (now, Count 2), and not Count B. Accordingly, we
have not addressed these arguments.
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