Interference No. 103,836
The Issues
At page 2 of its opening brief, the party Beam presents the following issues:
1. Whether Chase claims 24 and 44-48 are unpatentable for failure to comply
with 35 U.S.C. § 112, first paragraph.
2. Whether claims 1-11 and 14-17 of Beam are unpatentable under 35 U.S.C.
§§ 102/103 over U.S. Patent No. 5,636,906 to Chase.
3. Priority of invention.
In addition to the above matters, at page 3-5 of its brief (Paper No. 50), the party Chase
presents as issues the following:
1. Whether Beam is entitled to prove conception of the subject matter of the count
at any time prior to June 1, 1992 based on its original preliminary statement.23
2. Whether Beam has established conception at any time prior to the
June 25, 1992 effective filing date of Chase.
3. Whether Beam proved that it actually reduced the invention to practice.
4. Whether Beam has established reasonable diligence from just prior to senior
party’s entry into the field to a subsequent reduction to practice.
5. Whether Chase conceived the invention prior to Beam’s conception.
Patentability of Chase’s Claims 24 and 44-48
Beam contends that the senior party’s involved application lacks support for the above
claims under 35 U.S.C. § 112, first paragraph. With respect to Figure 3 of Chase, it is argued
that the above claims are not supported because the overlay 20 (appliqué 20) does not cover any
2 This issue relates to the motion of Beam filed August 5, 1999 to correct its preliminary statement (Paper No. 42).
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