Interference No. 103,854
Burden of Proof
In a motion which seeks to designate a claim as not corresponding to the count, the
burden is on the moving party to show, by a preponderance of the evidence,
that the claim does not define the same patentable invention as any other claim
whose designation in the notice declaring the interference as corresponding to the
count the party does not dispute [37 C.F.R. § 1.637(c)(4)(ii)].
In interference proceedings, the same patentable invention is defined by 37 C.F.R.
§ 1.601(n) as:
Invention “A” is the same patentable invention as an invention B” when invention “A” is
the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention “B” assuming
invention “B” is prior art with respect to invention “A”. Invention “A” is a separate patentable
invention with respect to invention “B” when invention “A” is new (35 U.S.C. 102) and non-
obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B” is prior art with
respect to invention “A”.
In the case before us, Wallach moves to designate claims 3, 6 and 7 of their U.S.
Patent 5,478,925, as not corresponding to the count. Thus, Wallach must show that the
subject matter of the referenced claims is not the same as, or obvious in view of, those
claims which they agree correspond to the count. Here, the burden is on Wallach to
establish that the species described in claims 3 and 6 would not have been obvious in view
of the genus of multimers encompassed by Smith claim 39 and Wallach claim 1,
corresponding to the count. In addition, Wallach must establish that the multimer being
encapsulated by a liposome (claim 7), would not have been obvious to one of ordinary skill in
the art in view of the multimer described in Smith claim 39 and Wallach claim 1,
corresponding to the count in combination with Utsumi.5
Claim 3
5 Utsumi, et al. (Utsumi), “Preparation and Characterization of Liposomal-
Lipophilic Tumor Necrosis Factor,” Cancer Research, Vol. 51, pp. 3362-366 (1991).
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