2001), approved in Symbol Technologies, Inc. v. Lemelson Medical,
Education & Research Foundation, Limited Partnership , 277 F.3d
1361, 61 USPQ2d 1515 (Fed. Cir. 2002). Dicta, of course, is not
precedent which must be followed. Cf. In re McGrew, 120 F.3d
1236, 43 USPQ2d 1632 (Fed. Cir. 1997); See also United States v.
Crawley, 837 F.2d 291 (7th Cir. 1988), cited in McGrew, and King
v. Erickson, 89 F.3d 1575, 1581 (Fed. Cir. 1996).
In our view, the Federal Circuit's observation is dicta to
the extent that it would require the board to decide
patentability in every instance merely because it can be said to
have been "fairly raised" during the course of an interference.
The Federal Circuit's observation was made in the context of the
case before it and is dicta because in Perkins the board had
decided both priority and patentability. Hence, the issue was
not whether there might be circumstances where the board might
not reach patentability, but whether the board in that case had
authority under § 135(a) to reach patentability notwithstanding
it had resolved priority. Perkins was not a case where there was
no interference-in-fact. Just because a party manages to file a
preliminary motion and evidence, thus "fairly raising" an issue,
does not mean that it would always be appropriate to decide the
issue where the underlying basis for the interference no longer
exists.
Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976),
establishes the authority of the board to determine with respect
to a count that there is no interference in fact. Upon a
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