AUSNIT V. INAGAKI - Page 5




          Interference No. 103,640                                                    



          sidered by this panel in our decision at final hearing.  “Proof             
          of any material fact alleged in a motion, opposition or reply               
          must be filed and served with the motion . . . .”   37 CFR                  
           1.639.  “[W]here the moving party is in possession of the                 
          necessary evidence, there is no legitimate reason why it should             
          not be presented with the motion.  If the motion is not                     
          accompanied by then available proof of a material fact, no                  
          further evidence should be received in the interference in                  
          connection with the issue raised in the motion.”   Orikasa v.               
          Oonishi, 10 USPQ2d 1996, 2000 n.12 (Comm’r Pats. & Trademarks               
          1989).  It was not the intention of the "new" rules to permit               
          routine requests to take testimony in lieu of presenting timely             
          affidavits and other available proof of material facts with the             
          motion.  Id.  A good faith effort must be made to submit evidence           
          to support a preliminary motion or opposition when the evidence             
          is available.  Okada v. Hitotsumachi, 16 USPQ2d 1789, 1790                  
          (Comm’r Pats. & Trademarks 1990).                                           
                    Specifically, the second declaration by Edelman 4 will            
          not be considered.  In our view, there is no legitimate reason              
          why the factual statements by Edelman could not have been                   
          included in the first Edelman declaration filed in opposition               
          to the junior party’s unpatentability motion under 37 CFR                   

               4 The second Edelman declaration is found at IR75-IR79.                
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