Interference No. 103,587
because we found, above, that Katayama is entitled to benefit of its prior applications
with respect to count 2 in spite of Levien’s argument to the contrary.
Patentability of Katayama’s Claims 32-41, 44-47 and 53-55
Under 35 U.S.C. § 112, first paragraph
Levien’s Position
Levien argues to the effect that each of amended claims 32-41 contains language wherein
the size of a plurality of dots is determined based on a prior output and that Katayama is not
entitled to copy such claims because in its disclosure the size of a plurality of dots is not
determined from a prior output. Levien states that claims 53-55 expressly recite apparatus that
generates or marks “variable size dots” and that Katayama does not disclose a variable size
“dot.” As before, Levien relies on LX-16, Webster’s New Dictionary and Thesaurus, to show
that “dot” means “a small spot” and that “spot” is defined as “a small area differing in color from
the surrounding area.” The junior party submits that since the white background in Katayama’s
processing contains contrasting black dots, the white background is not a “dot” by the above
definition of “dot” (Decl. Arce, page 16, paragraph 37).
Levien takes the position that the copied claims should be interpreted in light of Levien’s
file history. The junior party asserts that when interpretation is required of a claim that is copied
for interference purposes, the copied claim is viewed in the context of the patent from which it
was copied. In re Spina, 975 F.2d 854, 856, 24 USPQ2d 1142, 1144 (Fed. Cir. 1992). It is urged
that recent amendments to 37 CFR § 1.633(a) are not inconsistent with this principle of claim
interpretation. Levien states that the file history of its involved patent makes it clear that
determining the size of a plurality of dots means determining the size of a variable size dot.
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