PACHOLOK V. HUTMACHER et al. - Page 13



               Interference No. 103,830                                                                                              


               URYNOWICZ, Administrative Patent Judge, additional views:                                                             
                       I agree with the decision of my colleagues to enter judgment on the issue of priority                         
               against all of junior party Pacholok’s claims that correspond to counts 1 and 2, and I agree with                     
               Administrative Patent Judge Lee that Hutmacher’s claim 23 is unpatentable under 35 U.S.C.                             
               § 112, first paragraph, on the ground that Hutmacher’s disclosure fails to provide written                            
               description support fo r the claim’s requirement that the vehicle disabling device include “a                         
               positioning means for placing the vehicle disabling device under the pursued vehicle.”                                
                       Nevertheless, concerning the issue of the patentability of Hutmacher claim 23, it is                          
               disturbing that under the holding in Spina, the PTO, as represented by the primary examiner or                        
               the Board in an appeal under 35 U.S.C. § 134, would have had to interpret the copied claim in                         
               light of its originating disclosure when considering the claim’s patentability, whereas under                         
               interference Rule 1.633(a), validated by the holding in Dror, the PTO, as represented by the                          
               Board, construes the same claim in light of the specification in which it appears.  Conceivably,                      
               one approach might require a finding of claim patentability whereas the other approach might                          
               require a finding that the same claim is unpatentable.                                                                



                                       STANLEY M. URYNOWICZ, JR.                      ) BOARD OF PATENT                              
                                       Administrative Patent Judge                    )      APPEALS AND                             
                                                                                      )    INTERFERENCES                             
               SMU:clm                                                                                                               







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