counts."11 The Federal Circuit also noted that in Wu v. Wang,
129 F.3d 1237, 1241, 44 USPQ2d 1641, 1644-45 (Fed. Cir. 1997), it
had observed:
Despite having lost the right to his patent as a result
of an adverse decision on patentability, Wang still had
an interest in seeing that Wu was likewise not entitled
to the subject matter of the interference, albeit on
patentability, not priority grounds.
In Schulze and Wu, and for that matter Perkins, both parties
were claiming, and had an interest in, the same patentable
invention. In this interference, Livak and Han are not claiming
the same patentable invention. Thus, for essentially the reasons
given in connection with our discussion of Perkins, it follows
that Schulze likewise would not compel us to decide patentability
motions in an interference where it had been determined that
there is no interference-in-fact. To use the words of Wu, there
is no "subject matter of the interference". To use the words of
the Notice of Final Rule, there are no "controversies as to all
interfering subject matter defined by one or more counts" because
there is no interfering subject matter.
d.
Livak calls our attention to two decisions of the board.
Fiddes v. Baird, 30 USPQ2d 1481 (Bd. Pat. App. & Int. 1993),
11 The material quoted from the MPEP comes directly from the Notice
of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416 (col. 3)
(Dec. 12, 1984) ("The object of the interference will be to resolve all
controversies as to all interfering subject matter defined by one or more
counts.").
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