motions. Must they be decided on the merits or does the board
have discretion to dismiss them?
6. The board has discretion to dismiss the motions
a.
Section 135(a), on its face, would appear to give the board
discretion on whether it may decide a patentability issue in an
interference (bold added):
The Board of Patent Appeals and Interferences shall
determine questions of priority of the inventions and
may determine questions of patentability.
If priority and patentability are to be determined in an
interference, only the board has jurisdiction to decide those
issues. See 35 U.S.C. § 6(b), which allocates jurisdiction over
some matters in the Director and jurisdiction in other matters in
the board.
Section 135(a), of course, presupposes that an interference
exists and priority of invention is in need of resolution. Once
the board determines that there is no interference-in-fact, then
(1) the Director is no longer of the opinion that claims
interfere and (2) an interference is no longer needed for the
Director, through a patent examiner, to accomplish any further ex
parte examination of any application involved in the
interference.
Based on too broad a reading of dicta in the Federal
Circuit's decision in Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d
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