Interference 104,530
Jurgenson v. Dunfield
The parties have briefed the issue of whether a decision
on the remaining preliminary motions is necessary if it is
determined that Dunfield’s claims 40 and 41 are barred under
35 U.S.C. § 135(b).
Jurgenson argues that if it is determined that Dunfield
claims 40 and 41 are barred under 35 U.S.C. § 135(b), then
the interference should not proceed, such that the remaining
preliminary motions need not be decided. Dunfield argues
that having raised the patentability of several of
Jurgenson’s claims, we must determine the remaining
preliminary motions.
Based on the recent decision in Berman v. Housey,
01-1311 (Fed. Cir. 2002), it is now settled that when an
applicant is barred under § 135(b) that the remaining issues
in an interference need not be considered. Specifically, the
court stated that:
[T]he Board should terminate an interference once it
determines that there is a § 135(b) bar, [and that] the
Board acts in accordance with § 135 when it refuses to
address other issues of priority and patentability
raised ... (Id. at 12).
Since Dunfield claims 40 and 41, Dunfield’s only two
involved claims, are barred under 35 U.S.C. § 135(b), there
is no occasion to consider Dunfield’s remaining preliminary
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