Interference No. 104,681
Spears v. Holland
as not corresponding to a count shall "establish that the claim
covers an invention which is not the same patentable invention as
any of the opponent's claim designated as corresponding to a
count.113 Thus, party Spears need not establish that its claims,
8-12 do not define the same patentable invention as any of its
claims 1-3 and 5-7 which correspond to the count and which party
Spears does not seek to have designated as not corresponding to
the count. In that connection, party Holland's argument that
Spears has not established that claims 8-10 do not define the
same patentable invention as claims 1-3 and 5-7 is irrelevant.
The issue regarding Spears' claims 8-10 is whether the
preliminary motion has made out a prima facie case that these
claims do not define the same patentable invention as Holland's
claims 21 and 22. In that regard, the preliminary motion on page
7 makes the assertion that "there is no prior art of record or
known to the inventors of the Spears Patent which teaches or
suggests the limitations of Claim 8," citing to the declaration
of inventor Steven Spears (Exhibit 2011) and inventor David
Walker (Exhibit 2012).1 If Messrs. Spears and Walker actually
stated in their declarations the substance of the above-quoted
3 Party Spears' own claims do not constitute 35 U.S.C.
§ 102(g) prior art against party Spears.
4 Note that claims 9 and 10 depend from claim 8.
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