Patent Interference No. 103,548
· Lagrange reissue claims 7-8 to not correspond to Count 1;
· Lagrange reissue claims 1-6, 24-25 and 29 to not correspond to Count 2; and,
· Lagrange reissue claims 9-21 and 26 to not correspond to Count 3.
See Lagrange Preliminary Motion 3 (paper no. 61 21) [LPM3].
Lagrange has the burden of proof to show that it is entitled to the relief sought in
its two motions22, 37 CFR § 1.637. Furthermore,
a preliminary motion seeking to designate an application or patent claim as not
corresponding to the count shall... [s]how that the claim does not defined [sic] the
same patentable invention as any other claim whose designation in the notice
declaring the interference as corresponding to the count the party does not
dispute. 37 CFR § 1.637(c)(4)(ii).
The standard for determining separate patentable inventions is set forth in 37
CFR § 1.601(n):
corresponds to a count is identical to any claim of an opponent which corresponds to that count" [our
emphasis]. Lagrange moves only with respect to Patent claim 29. However, all of Lagrange's other Patent
claims still correspond to the counts. Under these circumstances, § 1.633(b) does not apply because the
interference involves claims of the Lagrange Patent which correspond to a count that are identical to
Konrad's claims corresponding to that count. We will presume Lagrange intended to move under §
1.633(c)(4) instead.
21 There was a previous Preliminary Motion 3 (paper no. 25). To be consistent with parties’ records,
"Lagrange Preliminary Motion 3" will refer to this paper, not the previous one.
22 We will treat LPM2 and LPM3 together. Although LPM2 is directed to Lagrange patent claim 29 and
LPM3 is directed to Lagrange reissue claims 1-21, 24-26 and 29, the issues are the same. Lagrange
patent and reissue claim 29 identically teach n-(C2-C4)alkyl-5,6-dihydroxyindolines. The rest, Lagrange
reissue claims 1-21, 24-26, are limited to using the n-(C2-C4)alkyl-5,6-dihydroxyindoline compounds. In
other words, all the claims to which LPM2 and LPM3 are drawn share the same limitation: the n-(C2-
C4)alkyl-5,6-dihydroxyindoline compounds of Lagrange patent/reissue claim 29. It is the patentability of
those compounds that is at issue in both motions. Accordingly, the motions present the same arguments:
· "Lagrange [patent] claim 29 is directed to new compounds consisting of n-(C2-C4)alkyl-5,6-
dihydroxyindolines and their salts." LPM2, p. 2, paragraph 3.
· "Lagrange reissue application 29 is directed to new compounds consisting of n-(C2-C4)alkyl-5,6-
dihydroxyindolines and their salts. Lagrange reissue application claims 1-6 and 24-25 are directed to
compositions containing these new compounds. Lagrange reissue application claims 1-8, 9-21 and 26
are directed to a method of dyeing keratinous fibers using compositions containing these new
compounds." LPM3, p. 2, paragraph 4.
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