Appeal No. 2001-1306 Page 20
Application No. 08/100,019
invention” involves a two-way patentability analysis. The
claimed invention of the patent and the claims of the application
are compared with each other. The claimed invention of the
patent must anticipate or render obvious the claimed invention of
the application and the claimed invention of the application must
anticipate or render obvious the claimed invention of the patent.
When the two-way analysis is applied, then if “same invention” is
claimed in both the patent and the application, an interference
should be declared instead of removal of the patent as prior art
based on a § 1.131 declaration.
At the time of filing of the declarations, claim 1 read as
follows:
1. A sealed package of film to be opened, put
into a camera and exposed to form a plurality of
photographs, comprising a plurality of film items to be
exposed, each film item comprising a first unexposed portion
and a second exposed portion, whereby upon exposure of the
first unexposed portion and development there is formed in
said first portion a picture corresponding to the exposure
alongside a picture corresponding to the second portion.
Claim 1 was amended to its current form (paper No. 23, filed July
7, 1997) in order to overcome the Examiner’s rejection based on
the second paragraph of 35 U.S.C. § 112 by conforming the claim
language to that of a product. The amendment broadened the scope
of the claim by removing the limitations related to placing the
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