Interference No. 103,995 Paper 29
Morel v. Sekhar Page 7
21. Coating composition claim 2 of the ‘084 patent reads:
A coating composition according to claim 1, comprising zirconium
diboride and colloidal silica in a weight ratio between 1:1 and 9:1.
22. Coating composition claim 5 of the ‘084 patent reads:
A coating composition [sic, according] to claim 2, additionally
comprising silicon carbide.
In support of its preliminary motion, Morel purports to establish that the subject
matter of Morel narrow claims 2 and 5 would not have been obvious in view of the subject
matter of Morel broad claim 1. The subject matter of Morel broad claim 1 can under no
circumstances be prior art vis-a-vis Morel. Accordingly, what Morel was required to
establish was that the subject matter of Morel narrow claims 2 and 5 is not anticipated by,
or rendered obvious over, the subject matter of a Sekhar claim designated as
corresponding to the count. After all, the issue in seeking to designate a claim as not
corresponding to a count is to establish that if the opponent wins on the issue of priority,
the subject matter of the claims sought to be designated as not corresponding to the count
would not be unpatentable under 35 U.S.C. § 102(g)/103 over the subject matter of the
claims of the winning party. Morel’s procedural non-compliance aside, a penetrating
analysis of the record will convincingly show that Morel has failed to prove by a
preponderance of the evidence that the subject matter of Morel narrow claims 2 and 5 is
patentably distinct from the subject matter of Morel broad claim 1.
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