AUSNIT V. INAGAKI - Page 6




          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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