Interference 102,728
B. Brake’s Preliminary Motion 2 for Benefit Pursuant to 37 C.F.R. § 1.633(f)
1. Singh’s arguments for review of APJ’s Decision
In the final decision of August 31, 1998, the original merits panel noted that
Singh provided two reasons as to why the APJ’s decision to grant Brake’s Preliminary
Motion 2 for benefit should be modified. 37 C.F.R. § 1.655(a). For example, the
original merits panel (Final Decision, Paper No. 164, p. 6) stated:
Singh argues that Brake made misleading statements to the APJ with respect to
the sufficiency of the written disclosure of the Brake 1 application, 06/457,325.
Singh Brief, p. 45, last para. According to Singh, Brake “improperly imported
information from the claims of the issued Brake patent, U.S. Patent 4,870,008, to
support its arguments regarding the sufficiency of disclosure present in the Brake
1 Application.” Id. Specifically, Singh refers to Brake’s statement in Motion (2)
that claims 3 and 4 are directed to “n=0” constructs wherein the Saccharomyces
"-factor spacer includes only Arg-Arg or Lys-Arg. Singh Brief, p. 49, first
complete para.
Here, we find that Brake’s statements were not misleading. See also, Final
Decision, Paper No. 164, p. 10. In Preliminary Motion 2, Brake was discussing where
in the Brake 1 specification there was written descriptive support for patent claims 3 and
4. Paper No. 15, p. 9. Brake distinguished the patent claims from the claim of the ‘325
Application by referring to the latter as original claim 5. Brake Brief, Exhibit 5, pp. 67-
68.
We further find that “assuming arguendo, Singh had found the referenced
statements misleading, he could have, and should have, raised this issue in his
opposition to Brake Motion (2). ... Not having done so, it is improper for Singh to raise
this issue now.” See also, Final Decision, Paper No. 164, p. 10.
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