Interference No. 103,995 Paper 29
Morel v. Sekhar Page 10
Here, it appears what the Examiner considered a “material factor” was the
performance of a ZrB /colloidal silica coating composition vis-a-vis a TiB /colloidal silica2 2
coating composition. Moreover, Morel has not pointed us to anything in either the ‘037
application file or the Examiner’s Statement of Reasons for Allowance that indicate the
Examiner ever considered the criticality of the 1:1 to 9:1 weight ratio range of Morel claims
2 and 5, particularly since the Examiner was willing to allow broader claim 1. In any event,
decisions of a primary examiner during ex parte prosecution are not binding on the Board
of Patent Appeals and Interferences in inter partes proceedings. Bloch v. Sze, 458 F.2d
137, 173 USPQ 498 (CCPA 1972); Okada v. Hitotsumachi, 16 USPQ2d 1789 (Comm’r.
Pat. 1990); Glaxo Wellcome, Inc. v. Cabilly, 56 USPQ2d 1983 (Bd. Pat. App. & Int. 2000).
Furthermore, the “same patentable invention” requirement concerns only the relationship
between the count and claims sought to be designated as not corresponding; it does not
concern general patentability. See Maier v. Hanawa, 26 USPQ2d 1606 (Comm’r Pats.
1992).
29. Dr. Veronique Laurent, testifying on behalf of Morel, declared that she had read
and was familiar with both the ‘084 patent and U.S. Patent 5,364,513 which issued to
Sekhar (MAEx 1, p. 2, ¶ 3).
30. The ‘084 patent reads “[t]he coating according to the invention vitrifies [2]
2Hackh’s CHEMICAL DICTIONARY, fourth edition, (McGraw-Hill Book Company, New York,
published 1969) defines
vitrify as “To sinter or melt to a glassy mass” (p. 717) ,
sintering as “The coalescence by heat of crystalline or amorphous particles into a solid mass, due
to the formation of allotropic crystals” (p. 614) and
glass as “An amorphous, hard, brittle, often transparent material; a fused mixture of the silicates of
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