benefit. Under 37 CFR § 1.640(b), however, a party must have timely given advance notice of
all the issues it desires to have reviewed at final hearing. By stipulated schedule filed on January
5, 2000 (Paper No. 68), the due date for filing the Rule 640(b) notice was set for July 1, 2000.
On June 30, 2000, party Gambaro filed its Rule 640(b) notice of issues to be reviewed at final
hearing. Goddard never filed such a Rule 640(b) notice. Consequently, party Goddard has
waived review of the administrative patent judge's denial of its preliminary motion for benefit.
Failure to comply with the notice requirement is not a mere "technicality," since the requirement
is intended to permit the opposing party an opportunity to include applicable evidence in the
record on which it would rely with respect to the issue to be raised. Accordingly, the renewed
motion for benefit is dismissed.
VI. Issues of the Senior Party which are Moot
Because Goddard has failed to demonstrate an actual reduction to practice prior to
Gambaro's filing date there is no occasion to reach Gambaro's priority case. Likewise, as
Goddard’s claims corresponding to Count 1 are unpatentable under 35 U.S.C. § 102(g), we do
not reach that portion of Gambaro's preliminary motion 2, which was deferred to final hearing,
concerning the alleged unpatentability of the Goddard's claims under 35 U.S.C. § 102(e)/103.
Consequently, Goddard's motion to exclude Gambaro's evidence (Paper No. 225) is
dismissed as moot and that portion of Goddard's Preliminary Motion 2 which has been deferred
to final hearing is dismissed as moot. Also moot is Gambaro's Miscellaneous Motion 7 which
renews its Miscellaneous Motion 5, previously denied, for leave to correct Gambaro's
preliminary statement. That motion is herein dismissed as moot.
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