Interference No. 103,995 Paper 29
Morel v. Sekhar Page 35
71. Dr. Laurent testified on behalf of party Morel that
I cannot find in the Sekhar [’513] patent a disclosure that a boride and
colloidal silica should be provided in a weight ratio approaching or greater
than 1:1. I further believe that if such a sample were provided by Sekhar, a
glassy phase would be formed upon heating to the temperatures disclosed
by Sekhar, so the sample would not function according to the Sekhar
disclosure, i.e., coating formation by sintering. Thus a sample with a
boride:colloidal silica weight ratio of 1:1 of greater would be non-functional
according to the Sekhar disclosure. [MAEx 1, pp. 4-5, ¶ 13.]
First, Sekhar claims 77-82 are not limited to particular ranges of zirconium diboride
to colloidal silica weight ratios or heating temperatures. Second,
vitrification is a form of sintering (see n.2 above). Third, interpreting vitrification as a form
of sintering is not inconsistent with the disclosure of the ‘115 application for the reasons
given above. Fourth, expert opinion testimony need not be credited when it does not
explain the underlying factual basis for an opinion. Therefore, we decline to accord the
Laurent Declaration any weight in determining the proper construction of Sekhar claims
77-82.
Finally, for completeness sake, we note that in its reply Morel argued that “claim 77
of the Sekhar application was interpreted in the manner in which claim 1 of the Morel
patent, from which claim 77 was copied, must be interpreted” (Paper 24, p. 2). Under the
new interference rules (April 21, 1995), all application claims are to be construed in light of
the associated application disclosure, regardless of whether they were copied from a
patent, just as they would be during ex parte examination. See 37 CFR 1.633(a) (1995)
(“In deciding an issue raised in a motion filed under this paragraph (a), a claim will be
construed in light of the specification of the application or patent in which it appears.”);
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