Interference 104,530
Jurgenson v. Dunfield
Dunfield argues that Jurgenson has failed to satisfy its
burden of demonstrating that Dunfield’s involved claims are
barred under 35 U.S.C. § 135(b). Dunfield argues that since
the examiner determined that Dunfield’s claims 40 and 41 are
patentable under 35 U.S.C. § 135(b), then Jurgenson has a
“particularly heavy burden” to establish that Dunfield’s
claims 40 and 41 are unpatentable under 35 U.S.C. § 135(b)
(Paper 88 at 1). Dunfield’s argument is misplaced. An
examiner’s decision made during ex parte prosecution of an
involved application is not binding on the Board, and
certainly does not raise the moving party’s burden of proof.
See Glaxo Wellcome, Inc. v. Cabilly, 56 USPQ2d 1983, 1984
(Bd. Pat. App. & Int. 2000) (Trial Section). (Neither the
Board nor a party are bound by an ex parte decision made
during prosecution by another party. A motion in an
interference is not an appeal from the examiner's decision,
but an independent request to the Board).
Additionally, Dunfield argues that Jurgenson has failed
to satisfy its burden of proof, since Jurgenson relies on
attorney argument in support of its position (Paper 88 at 6).
Jurgenson, in both its preliminary motion 1 and in its brief
addressing issue 1, sufficiently demonstrates that Dunfield’s
earlier claims do not recite a material limitation of the
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