Interference No. 103,995 Paper 29
Morel v. Sekhar Page 13
Declaration to be insufficient to establish that coatings having a weight ratio of zirconium
diboride to colloidal silica greater than 1:1 provide a materially different coating than a
coating formed with lesser amounts of zirconium diboride.
As to “evidence [which] could be presented” to show the patentability of Morel
claims 2 and 5, when the moving party is in possession of the necessary evidence, there is
no legitimate reason why it should not be presented with the motion. If the motion is not
accompanied by the then available evidence of material fact, no further evidence should be
received in the interference in connection with the issue raised in the motion. 37 CFR §
1.639. Bayles v. Elbe, 16 USPQ2d 1389, 1392 (Bd. Pat. App. & Int. 1990) (“The rules
provide that all evidence in support of a motion must be filed and served with the motion.
See 37 CFR § 1.639"); Orikasa v. Oonishi, 10 USPQ2d 1996, 2000 n.12 (Comm’r. Pat.
1989):
[W]here the moving party is in possession of the necessary evidence, there
is no legitimate reason why it should not be presented with the motion. If the
motion is not accompanied by then available proof of a material fact, no
further evidence should be received in the interference in connection with the
issue raised in the motion. 37 CFR § 1.639.
Here, as noted by Sekhar in its opposition, “Morel has made no effort to show that
the evidence which ‘could be presented’ was not available prior to the filing of this Motion”
(Paper 22, p. 2).
Thus, Morel has failed to satisfy the requirements of Rule 637(c)(4)(ii).
Finally, it is not necessary for us to reach Sekhar’s argument that Morel claims 2
and 5 are obvious over Morel claim 1 in view of Weir WO 88/03519 (MDEx 1) (Paper 22,
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