14. A party seeking to have a claim designated as
corresponding to a count, inter alia, must "[s]how that 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).
15. In its preliminary motion, Alt argues that
"Rohrmann [c]laim 5 cannot be viewed as patentably distinct from
Alt's claim 101 and *** therefore Rohrmann's [c]laim 5 should be
designated as corresponding to *** Count 2" (Paper 19, page 3,
¶ 9).
16. Alt claim 101 is directed to a two step process.
a. The first step calls for a method of making a
metallocene.
b. The second step calls for using the
metallocene made in the first step to
polymerize an olefin.
17. Alt has not demonstrated that, within one year of
the issuance of the Rohrmann patent, any attempt was made to
amend its involved application to add a claim directed to a
method of making the metallocene.
C. Discussion
For the reasons which follow, we do not believe Alt is
entitled to the relief it seeks.
For the purpose of deciding Alt preliminary motion 1, we
will assume, without deciding, that under Rule 637(c)(3)(ii), Alt
was under a burden to show that the subject of Alt claim 101 is
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