Interference No. 103,635
catalyst used in the process to obtain a 99% conversion. To this argument, we respond
that "The best mode inquiry is directed to what the applicant regards as the invention,
which in turn is measured by the claims.” Engel Indus., Inc. v. Lockformer Co., 946 F.2d
1528, 1531, 20 USPQ2d 1300, 1302 (Fed. Cir. 1991). Koyama's claim does not specify a
pressure or catalyst and moreover does not specify a degree of conversion. The claim is
directed to a method for producing 1,1,1,2-tetrafluoroethane in two reaction stages. It is
not directed to a method of converting 99% of trichloroethylene to 1,1,1,2-tetrafluoroethane
under a particular pressure and/or catalyst. Hence, we hold that Scott have not sustained
their burden of proof. Moreover, the conditions necessary to obtain a 99% conversion is
not relevant to the issue. Scott must show that Koyama had that as a preferred
embodiment and concealed it. That Scott has not shown.
Accordingly, we find that, on this record, Scott has not sustained the burden, with
respect to the motion.
JUDGMENT
For the foregoing reasons, judgment as to the subject matter of the count is entered
in favor of senior party, Satoshi Koyama, Yukio Homoto and Naoki Esaka and judgment is
awarded against junior party John D. Scott and Rachel A. Steven.
Having decided all the issues properly raised by the parties in their briefs, we now
enter judgment in this interference pursuant to our authority under 37 C.F.R. § 1.658(a).
Accordingly: we hold the following:
Scott Motion 1 is denied.
John D. Scott and Rachel A. Steven, the junior party, are not entitled to their patent
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