Interference No. 102,755
preliminary motion under 37 CFR 1.633 does
not come to light until after a decision on
preliminary motions has been entered. For
example, a party may conclude, after
hearing the opponent's testimony, that the
opponent's application or patent does not
comply with the "best mode" requirement of
35 USC § 112, first paragraph; or a prior
art reference may be found which the party
could not previously have located. The
purpose of this notice is to clarify the
policy of the Board of Patent Appeals and
Interferences as to what steps the party
must take if it wishes to have an issue
based on such evidence considered by the
Board.
If the time for filing preliminary
motions has expired, and then evidence
comes to light which in the opinion of a
party would provide [a] basis for a
preliminary motion under 37 CFR 1.633, that
party may not simply raise the matter in
its brief at final hearing for the Board's
consideration. Rather, it is the policy of
the Board that it will not consider the
matter unless the party files promptly
after the evidence becomes available:
(1) the appropriate preliminary motion
under 37 CFR 1.633; and
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Last modified: November 3, 2007