the story.5 The rules therefore authorize the filing of a
preliminary motion for judgment of no interference-in-fact to
test whether an interference exists. 37 CFR § 1.633(b). The
rules define an interference-in-fact (37 CFR § 1.601(j))
(emphasis in original):
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.
The rules also define "the same patentable invention"
(37 CFR § 1.601(n)):
Invention "A" is the same patentable invention as
an invention "B" when invention "A" is the same as
(35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view
of invention "B" assuming invention "B" is prior art
with respect to invention "A". Invention "A" is a
separate patentable invention with respect to invention
"B" when invention "A" is new (35 U.S.C. 102) and
non-obvious (35 U.S.C. 103) in view of invention "B"
assuming invention "B" is prior art with respect to
invention "A".
A party seeking to establish that there is no interference-
in-fact has the burden of proof (37 CFR § 1.637(a)). As applied
to the facts of this case, Livak was under a burden to establish
5 Binding and other precedent reveals that a decision made ex parte is
not binding in a subsequent inter partes interference proceeding. Sze v.
Bloch, 458 F.2d 137, 173 USPQ 498 (CCPA 1972); Switzer v. Sockman, 333 F.2d
935, 142 USPQ 226 (CCPA 1964); Turchan v. Bailey Meter Co. , 167 F. Supp. 58,
63-64, 119 USPQ 165, 169 (D. Del. 1958).
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