consider the patentability of Baird claims 11-21, 23-25 and 27
prior to determining whether there was an interference-in-fact
between (1) the patentable Fiddes claims and (2) patentable Baird
claims 26 and 28. We disagree with the Fiddes panel to the
extent that it considered the subject matter of unpatentable
Baird claims 11-21, 23-25 and 27 in its determination of whether
there was an interference-in-fact between the "involved" Fiddes
and patentable Baird claims 26 and 28. What manifests itself
from the discussion of the no interference-in-fact issue is that
the panel felt that there was no interference-in-fact between any
Fiddes claim and any Baird claim. The significant determination,
insofar as the board's "judgment" was concerned, however, is that
there was no interference-in-fact between (1) patentable Fiddes
claims 43 to 46, 50 to 54 and 57 to 69 and (2) patentable Baird
claims 26 and 28. The rationale in support of the panel's no
interference-in-fact determination applies to Baird claims 26
and 28.
Fiddes v. Baird illustrates a situation where the board
exercised discretion by determining unpatentability so that it
could properly determine how to resolve a no interference-in-fact
issue which had been properly presented to it. In the
interference before us, it was not necessary to determine whether
any Han claim was unpatentable before making a proper no
interference-in-fact analysis.
e.
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