that the subject matter of its claims designated as corresponding
to the count (Livak claims 1, 3, 14 and 24) does not anticipate
(35 U.S.C. § 102) or render obvious (35 U.S.C. § 103) the subject
matter of any Han claim that is designated as corresponding to
the count (Han claims 102-108). For this purpose, the subject
matter of Livak's claims are presumed to be prior art vis-a-vis
Han. If the party establishes, as Livak has done in this case,
that its patent claims do not interfere with the claims of its
applicant opponent, what becomes apparent is that the Director no
longer needs to conduct an interference to determine whether a
patent can be issued to the applicant. Why? Because, the
subject matter of the patentee's claims neither anticipates nor
renders obvious the subject matter claimed by the applicant even
if it is assumed that the patentee made its invention first. The
patent no longer constitutes an impediment to granting a patent
to applicant. Cf. Case v. CPC International, Inc. , 730 F.2d 745,
749, 221 USPQ 196, 200 (Fed. Cir. 1984) (no interference-in-fact
means that there is no interfering subject matter and that Case's
patent is no impediment to granting CPC the claims of its
application).6
6 Judicial review of "no interference-in-fact" issues has been relatively
rare. In Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), the CCPA held
that the board correctly determined that an interference-in-fact existed
notwithstanding the fact that there was no "overlapping" claimed subject
matter. Thus, an interference-in-fact was held to exist between a claim to a
method of using cyclopentadiene and a claim to a method using butadiene,
isoprene, dimethylbutadiene, piperylene, anthracene, perylene, furan and sorbic
acid. In Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), a two-
count interference, the CCPA held that there was an interference-in-fact as to
one count but not as to a second count.
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