Interference 102,728
The Court stated that “the Board erred in rejecting Singh’s argument that the
24-mer had no other ‘substantial use’ than to accomplish the loop deletion.”32 Singh v.
Brake, 222 F.3d at 1369, 55 USPQ2d at 1678.
The Court vacated the Board’s holding with respect to conception and remanded
the case for the Board (i) “to consider the evidence in the December 21 entry, (ii) to
reconsider Singh’s ‘substantial use’ argument, and (iii) to reevaluate the totality of the
corroborative evidence on remand.” Singh v. Brake, 222 F.3d at 1369, 55 USPQ2d at
1679.
In order to ensure that the decision of this merits panel would be based on the
same facts which were before the Federal Circuit, the parties were invited to re-brief the
issue of Singh’s case for priority. Paper No. 171, Order Setting Times for Taking
Action, pp. 2-4. Since we cannot make findings of facts on evidence not before us, the
Order specifically asked the parties to address several of the issues raised by the
Federal Circuit and to indicate the section(s) of the record which support their positions
with respect to said issues.
32 Singh did not argue in its original Brief (Paper No. 151) that there was no other
“substantial use” for the 24-mer. Rather, Singh presented this argument in its original
Reply Brief (Paper No. 160, pp. 44-46). New arguments in a Reply Brief are improper
and are not considered by the Board because the opposing party has no opportunity to
respond. Photis v. Lunkenheimer, 225 USPQ 948, 950 (Bd. Pat. App. & Int. 1984).
47
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