Patent Interference No. 103,548
29 of Lagrange U.S. Patent 5,178,637 or reissue claims 1-21, 24-26 and 29 of Lagrange
Reissue Application 08/676,491 designated to correspond to those counts.
Claims 22-23 of Lagrange U.S. Patent 5,178,637 and Claims 22-23 of Lagrange
Reissue Application 08/676,491
Konrad challenges the designation of Lagrange patent and reissue claims 22-23
as not corresponding to the counts. Konrad moves under 37 CFR § 1.633(c)(3) to
redefine the interfering subject matter by designating:
· Lagrange patent claims 22 and 23 to correspond to Count 2.
See Konrad Preliminary Motion 5 (paper no. 30) [KPM5].
· Lagrange reissue claims 22 and 23 to correspond to Count 2.
See Konrad Preliminary Motion 7 (paper no. 63) [KPM7].
Konrad has the burden of proof to show that it is entitled to the relief sought in its
motions43, 37 CFR § 1.637. Furthermore,
a preliminary motion seeking to designate an application or patent claim to
correspond to a count shall... [s]how the claim defines the same patentable
invention as another claim whose designation as corresponding to the count the
moving party does not dispute. 37 CFR § 1.637(c)(3)(ii).
The standard for determining same patentable inventions is set forth in 37 CFR
§ 1.601(n):
Invention "A" is the same patentable invention as an invention "B" when invention
"A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention "B" assuming invention "B" is prior art with respect to invention "A."
Invention "A" is a separate patentable invention with respect to invention "B" when
43 Because the same subject matter is involved in Lagrange patent claims 22-23 and reissue claims 22-23
(see KB 4-5, paragraphs 4 and 13), KPM7 presents the same arguments as KPM5. For this reason, we
will treat KPM5 and KPM7 together.
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