connecting the switch contacts in accordance with predetermined mapping of alphabetic
representations to numeric keys provided on a standard 12-key telephone keypad by
assigning a single letter to each of said alphabetic keys; and
generating a telephone dialing signal responsive to depression of a key on said alphabetic
keyboard and said connecting step, said signal corresponding to a numeric digit determined
according to said providing step.
C. Count interpretation
In order for a party to prove conception or actual reduction to practice, the party must show
conception or actual reduction to practice of an embodiment within the scope of the count. The count is
in an alternative format incorporating by reference certain claims of each party. In this format, a party must
show conception or actual reduction to practice of an embodiment falling within at least one of the
alternatives of the count. An embodiment falls within the scope of a count if it meets all the limitations of
at least one of the claim alternatives of the count.
D. Solomon’s Case for Priority
Our deliberations have considered all of Solomon’s submissions. A listing of them follows:
1. Preliminary Statement of William Solomon with attached exhibits A-E; and1
2. Declaration of Miroslaba Recalde with attached exhibits A and B.
1. The burden and standard of proof
As the junior party, Solomon bares the burden of proof on the issue of priority. 37 CFR
§ 1.657(b); Bosies v. Benedict, 27 F.3d 539, 541, 30 USPQ2d 1862, 1863 (Fed. Cir. 1994); Oka v.
Youssefyeh, 849 F.2d 581, 584, 7 USPQ2d 1169, 1172 (Fed. Cir. 1988). “It is well settled that where
an interference is between a patent that issued on an application that was copending with an interfering
application, the applicable standard of proof is preponderance of the evidence.” Bosies, 27 F.3d at 541-
42, 30 USPQ2d at 1864, see also Peeler v. Miller, 535 F.2d 647, 651 n.5, 190 USPQ 117, 120 n.5
1
While 37 CFR § 1.629(e) provides that “preliminary statement shall not be used as evidence on
behalf of the party filing the statement,” under the particular facts of this interference and because Solomon’s
preliminary statement is the form of a declaration, we will consider the declaration as part of the priority case. Many
allegations in a preliminary statement are statements of conclusions of law. To the extent the preliminary statement
alleges conclusions of law, we have considered the preliminary statement to be an argument.
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