Interference 102,728
during the earlier proceeding”). Accordingly, we return Singh’s briefs9 on the issues of
written description and enablement, for failing to comply with 37 C.F.R. § 1.655(a) and
(b). Thus, in this decision, we rely on Singh’s original briefs, Paper No. 151, filed April
2, 1996, and Paper No. 160, filed June 7, 1996, for written description and enablement
purposes and will only consider those arguments which are properly raised.
2. Proper arguments
The court observed in Singh v. Brake, 222 F.3d at 1366, n.6, 55 USPQ2d at
1675, n.6, that the United States Patent and Trademark Office (USPTO) amended 37
C.F.R. § 1.655(a) to its current form in 1999. Thus, the present standard of review
differs from the previous standard applied by the Board in entering the final judgment
issued on August 31, 1998.10 This merits panel will apply the new standard.
Under 37 C.F.R. § 1.655(a), review at final hearing of a substantive decision by a
single APJ granting or denying a preliminary motion means that the merits panel does
not accord any deference to the single APJ on fact or legal issues. In addition, this
panel will consider only those issues which were properly raised in timely-filed motions
9 Concordantly, Brake’s briefs filed subsequent to the Federal Circuit’s mandate
on the issues of written description and enablement are also being returned with this
decision.
10 The amendment to § 1.655(a) affords a full hearing of any properly-raised,
dispositive issue by a three-judge panel and, thus, provides “the public with more
certainty as to how matters will be considered... [and] make[s] practice within the Board
more uniform.” Interim Rule, 37 C.F.R. § 1.655(a), 64 Federal Register 12900, 12901
(1999).
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