Interference No. 103,640
§ 1.633(a). Allowing further direct testimony from Edelman by
declaration would permit the senior party a second chance to
establish patentability after having “tested the waters” by the
first declaration. Such “testing of the waters” has specifically
been targeted by this Board as not permitted under our inter-
ference rule 37 CFR § 1.639. See Hanagan v. Kimura, 16 USPQ2d
1791, 1793 (Comm’r Pats. & Trademarks 1990). It amounts to
piecemeal prosecution and is antithetical to the orderly
resolution of interferences.
With respect to the declaration of Denis Kissane, 5
entered into the record to establish secondary considerations,
the facts presented in this declaration are of the type readily
available to the assignee of the involved application. Here
again, there is no legitimate reason why this declaration was
not tendered during the motion period. Accordingly, since this
declaration was not submitted with the opposition to the Ausnit
motion for judgment during the motion period, we will not
consider it at final hearing.
Standard of Review
On March 16, 1999, the Patent and Trademark Office
5 The Kissane declaration is found at IR1 to IR11.
6
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