Interference No. 104,649
Page No. 38
furtherance of the '098 claims are limiting for the claims now sought. Moreover, even if Zhou
were correct that the comments in the '098 application were erroneous in describing the reflected
light as refracted, it would appear that the claims of the '098 application would lack written
description rather than the presently claimed invention. 4
Zhou Preliminary Motion 2 seeking judgment that Keagy's corresponding claims lack
sufficient written description and/or are indefinite is denied.
D. Zhou Preliminary Motion 3 to Deny Priority Benefit of Earlier Keagy
Applications
Zhou Preliminary Motion 3 requests judgment that Keagy be denied priority benefit of
Keagy's earlier filed '418 and '098 applications. (Zhou Preliminary Motion 3, Paper No. 26, p.
1). Generally, Zhou alleges that the '418 and '098 applications fail to constitute a constructive
reduction to practice of the count. (Paper No. 26, p. 4).'
For Keagy to have benefit of its earlier filing dates, Keagy's earlier applications must
constitute a constructive reduction to practice of the subject matter of the count. Credle v. Bond,
25 F.3d 1566, 1570, 30 USPQ2d 1911, 1914 (Fed. Cir. 1994). For an earlier-filed application to
serve as constructive reduction to practice, "the applicant must describe the subject matter of the
count in terms that establish that he was in possession of the later-claimed invention, including
all of the elements and limitations presented in the count, at the time of the earlier filing." Hyatt
v. Boone, 146 F.3d 1348, 1353-54, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998). Moreover, "it is
'Zhou Preliminary Motion 3 also requests that Keagy's corresponding claims be held
indefinite. (Paper No. 26, pages 12-15). Zhou's arguments regarding indefiniteness have been
addressed with respect to Zhou Preliminary Motion 2.
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