Interference No. 104,192
Cragg v. Martin v. Fogarty
accorded benefit in this interference and with respect to
which Fogarty’s involved application is a divisional
application.
Cragg’s opposition brief does not take up and address the
issue as noted above. We find Fogarty’s presentation
persuasive at least in the circumstances of this case.
Consequently, we no longer rely on the above-quoted portion of
the motion panel’s decision to deny Fogarty’s preliminary
motion 8.
Another issue, however, nonetheless undermines and
precludes the granting of Fogarty’s preliminary motion 8. As
was explained in the motion panel’s decision on page 53:
[W]e disagree with Fogarty’s contention that if a
claim the same as Martin’s claim 2 is made in an
application, then a claim the same as Martin’s claim
1 is also necessarily made, simply because Martin’s
claim 2 depends from Martin’s claim 1 and thus
includes all features of Martin’s claim 1. The case
cited by Fogarty, In re Schutte, 244 F.2d 323, 113
USPQ 537 (CCPA 1981), does not hold that so long as
every feature of a claim is present in another claim
then substantially the same subject matter is being
claimed. In Schutte, no other difference between
two claims is at issue, except for the one which the
Court regarded as different in language but same in
substance.
Fogarty’s view leads to the erroneous result that a claim
directed to patentably distinct and separately patentable
- 40 -
Page: Previous 33 34 35 36 37 38 39 40 41 42 43 44 45 46 47 Next
Last modified: November 3, 2007