others assuming one party’s claims to be prior art to the opponent’s claims. Since Glaxo has not
sufficiently explained why there is not an interference -in-fact under 37 CFR § 1.601(j), Glaxo
has not met its burden of proof. 37 CFR § 1.637(a).
Glaxo provides four other reasons why its motion should be granted:
(1) The ‘611 claims are not prior art against Glaxo since they were not added to the
‘611 application until 14 years after Cabilly’s earliest benefit filing date.
(2) Glaxo established the patentability of its claims over a patent that issued from a
Cabilly benefit application during ex parte prosecution before the examiner.
(3) The Glaxo applications are patentable over any claims that the ‘611 application
can support as required by 35 USC § 112.
(4) The ‘611 claims should not have been allowed and thus there is no interference
between a “patentable” ‘611 claim and a Glaxo claim.
Most of the arguments in Glaxo preliminary motion 11 are found in Glaxo preliminary
motions discussed above and therefore are addressed elsewhere in this decision. Nonetheless, in
response to each of the four reasons, we again note the following:
(1) For purposes of priority benefit, we look to the specification of earlier filed
application (not just the claims) to determine if an embodiment within the scope of the Count is
present. Such an embodiment is what is prior art against the opposing party. Cromlish v. D.Y.,
57 USPQ2d at 1319 and 35 USC § 102(g). Moreover, 37 CFR § 1.601(n) assumes a first
invention is prior art to another invention in defining whether the other invention is the “same
patentable invention” as the first invention and vice versa.
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