considered Cabilly opposition 3 and that portion of Cabilly opposition 5 addressing Glaxo’s
argument seeking to deny Cabilly priority benefit of the ‘419 application.
Glaxo preliminary motion 14
In its preliminary motion 14, Glaxo moves for priority benefit of the filing dates of the
following Glaxo applications for its proposed Count 2: (1) 08/046,893, filed 15 April 1993,
(2) 07/943,146, filed 10 September 1992, and, (3) 07/777,730, filed 16 October 1991. Glaxo
was accorded priority benefit of the applications for Count 1 (FF 12).
Cabilly opposes, arguing that the applications do not describe an enabled embodiment
within the scope of Count 2. Since Glaxo cannot prevail on priority even if its preliminary
motion 14 is granted, we need not and have not decided Glaxo preliminary motion 14. Glaxo
preliminary motion 14 is DISMISSED as moot.
Glaxo preliminary motion 11
In its preliminary motion 11, Glaxo moves for judgment that there is no interference-in-
fact between its claims and the ‘611 Cabilly claims.
An interference-in-fact exists when at least one claim of a party that is designated to
correspond to a count and at least one claim of an opponent that is designated to correspond to
the count define the same patentable invention. 37 CFR § 1.601(j). Glaxo does not argue that
no corresponding Glaxo and no corresponding Cabilly claim define the same patentable
invention as defined by 37 CFR § 1.601(n). Instead, Glaxo argues that Cabilly’s claims are
unpatentable under 35 USC § 112, ¶ 1, and thus do not define a “patentable invention”.
However, patentability to a particular party is not required by 37 CFR § 1.601(j) or 1.601(n).
Rather “patentability” under §§ 102 and 103 is judged by comparing one party’s claims to the
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