SOLOMON V. BHAGAVATULA - Page 8




                                           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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