Interference No. 103,830
MARTIN, Administrative Patent Judge, concurring in part and dissenting in part.
For the reasons given by my colleagues, I concur in their decision to enter judgment on
the issue of priority against all of junior party Pacholok's claims that correspond to Counts 1
and 2, i.e., claims 1-53.
However, I do not agree with their decision that Hutmacher's claim 23 is unpatentable
under the written description requirement of 35 U.S.C. § 112, first paragraph, on the ground that
Hutmacher's disclosure fails to provide written description support for the claim's requirement
that the claimed vehicle disabling device include "(b) positioning means for placing the vehicle
disabling device under the pursued vehicle."6 For the reasons given by my colleagues, we are
required by 37 CFR § 1.633(a) and Rowe to construe the language in question in light of
Hutmacher's disclosure. While I share Judge Urynowicz's concern that this leads to an
apparently anomalous result, i.e., construing the claim in light of Pacholok's disclosure in an ex
parte context under Spina versus construing it in light of Hutmacher's disclosure in an
interference context under Rowe, that seems to be the import of those decisions.
Turning now to the facts, the only embodiments in Hutmacher which employ vehicle
disabling apparatus located under a pursued vehicle are the embodiments of Figures 2-4, which
6 Pacholok has not briefed this issue for final hearing. As the prevailing party on this support issue, Pacholok
properly omitted any discussion of this decision in its opening brief for final hearing, leaving it to Hutmacher to
raise the issue in its brief, which Hutmacher did. See Patent Appeal and Interference Practice -- Notice of Final
Rule, 60 Fed. Reg. 14,488, 14516 (March 17, 1995), reprinted in 1173 Off. Gaz. Pat. & Trademark Office 36, 60
(April 11, 1995) (explanatory notes on adoption of amended interference rules) :
In order to clarify that the opening brief of a junior party need not address the evidence of the
other parties, § 1.656(b)(6), as adopted, is revised to require only that the junior party's opening
brief contain the contentions of the party "with respect to the issues it is raising for consideration
at final hearing." These issues would include the junior party's case-in-chief for priority with
respect to an opponent or derivation by an opponent as well as matters raised in any denied or
deferred motions of the junior party that are to be reviewed or considered at final hearing.
However, Pacholok failed to file a reply brief responding to Hutmacher's arguments for reversing the APJ's decis ion.
This failure arguably could be construed as agreement with Hutmacher's contention that the decision should be
reversed.
- 14 -
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007