Interference No. 103,414
Henry's failure to include this argument in his brief(s)
precludes him from having it considered at final hearing. See
Rosenblum v. Hiroshima, 220 USPQ 383, 384 (Comm'r Pat. 1983):
The purpose of oral argument at final hearing is to
emphasize and clarify written argument in the brief.
Compare In re Chiddix, 209 USPQ 78, 79 (Comm'r. Pat.
1980). A party in an interference should not be
permitted to raise for the first time orally at final
hearing an issue which should have been briefed.
Consequently, we will treat Ellis as having conceded that the
count does not require a third shank portion intermediate the
claimed relatively large and relatively small diameter shank
portions. As will appear, however, the outcome of the
interference would be the same even if we agreed with Ellis's
narrower interpretation of the count.
Henry argues that for the following reasons Ellis is
precluded from relying on either of his rivets to prove priority
with respect to the count:
Junior Party Ellis has not stated nor [sic]
indicated through any evidence exactly how each
limitation of Count 1 is satisfied. Party Ellis
leaves the inventorship of the actual pre-existing
subject of Count 1 mysterious. The Court of
Appeals for the Federal Circuit clearly states
that in establishing conception, a party must
prove it conceived of every limitation of the
count. Kridl [v. McCormick], [105 F.3d 1446,
1449,] 41 U.S.P.Q.2d [1686,] 1689 [(Fed. Cir.
1997); Coleman [v. Dines], [754 F.2d 353, 359,]
224 U.S.P.Q. [857,] 862 [(Fed. Cir. 1985)]. The
reason Party Ellis has not explained how it
conceived of each limitation of Count 1 is because
Junior Party Ellis did not invent what is claimed
in Count 1, Senior Party Henry did. Instead of
inventing what is claimed in Count 1, Junior Party
Ellis has set forth evidence of its improvement to
the rivet of Count 1. [H.Br. 6-7.]
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