Interference No. 103,635
Koyama (KB 6-7)
KI1 Does the failure of the Scott Record to include any evidence that the process of the
Count was actually demonstrated or performed by Scott in the United Sates before
the priority date of March 13, 1990 of Koyama prevent Scott from proving priority
against Koyama based on an actual reduction to practice?
KI2 Does the evidence of activity in the Scott Record directed only to commercially
developing the process during the critical period of March 12-19, 1990 prevent
Scott from proving priority against Koyama based on "diligence" towards an actual
reduction to practice?
KI3 Does the failure of the Scott Record to include any evidence of a best process
mode concealed by the Koyama inventors prevent Scott from proving that the patent
application of Koyama violates the best mode requirement of 35 U.S.C. §112?
We will address the priority issue first, followed by a discussion of the patentability issue.
PRIORITY
It is not the burden of the Board to scour the record, research any legal theory that
comes to mind and serve generally as an advocate for a party. Compare Ernst Haas
Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir.
1999). Accordingly, in making our determination as to priority we have reviewed
only those specific facts and arguments of the parties relied upon in their briefs. See 37
C.F.R. § 1.656(b)(5) and(b)(6)9.
Senior party Koyama relies on their priority date of March 13, 1990 to prove a
9 37 C.F.R. § 1.656(b)(5) requires:
[A] statement of the facts, in numbered paragraphs, relevant to the issues presented for decision with
appropriate references to the record.
And 37 C.F.R. § 1.656(b)(6) requires:
[A]n argument, which may be preceded by a summary, which shall contain the contentions of the party with
respect to the issues it is raising for consideration at final hearing, and the reasons therefor, with citations to
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