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.
5
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