Yamada’s claim 55 describes a superconducting wire. This description meets the
superconducting wire limitation of Yurek’s claim 10. Yamada’s claim 55 also describes a
continuous oxide superconductor. This meets the continuous superconducting oxide phase of
Yurek’s claim 10. Virtually all of Yamada described superconducting oxides include copper. The
phrase superconducting oxide in Yamada’s claim 55 thus describes copper containing
superconducting oxide as specified in Yurek’s claims. Yamada’s Claim 55 further describes an Ag
matrix. We held above that, that we could see no difference in subject matter between Yamada’s
matrix and the noble metal skeleton which is implicitly required by Yurek’s claims. Lastly, Yurek’s
Claim 10 is not limited to Ag, but specifies a noble metal. However, as we noted above, Ag is a
noble metal. Thus, Yamada’s claim 55 meets every limitation of Yurek’s Claim 10 and anticipates
that claim.
Since Yurek’s Claim 10 anticipates Yamada’s Claim 55 and vice-versa, the two-way test
for interference-in-fact has been met.
Yamada argues that Yamada’s Claims 55-59 and 102 would not have been obvious from
Yurek’s Claims 1-12. Paper 27, pp. 18-22. It is unnecessary for us to address the obviousness
argument in light of our interpretation of Yurek’s claims and our finding that there is an
interference-in-fact between at least Yurek’s Claim 10 and Yamada’s Claim 55.
Yamada’s preliminary motion asserting no interference-in-fact between the parties involved
claims is Denied.
C. FINAL JUDGMENT
Since Yurek did not file a preliminary statement, Yurek is restricted to its effective filing
date of March 27, 1987. 37 CFR 1.629(c). As this date is subsequent to Yamada’s effective filing
date of March 13, 1987, Yamada is presumptively the first to invent the subject matter of the count.
37 CFR 1.657(a). Because it did not file a preliminary statement, Yurek is not permitted to prove
that it made the invention prior to its filing date (37 CFR § 1.629(c)(2)(i)) or to present a case-in-
chief (37 CFR § 1.651(c)(2)). Since Yurek filed no preliminary motions and is precluded from
proving a date of invention earlier than Yamada’s filing date, under the particular facts of this case,
the issuance of an order to show cause (37 CFR §1.640(d)(2)) is unnecessary and entry of a final
judgment at this time is appropriate.
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