Interference No. 104,681
Spears v. Holland
First, the statement of the precise relief requested does
not make clear the ground of the obviousness assertion. Is each
of the references involved in an overall big combination, or are
there several smaller combinations which each render the claims
obvious? Secondly, paragraph 26(e) of the Standing Order
requires that any difference between the claimed invention and
the prior art reference be explicitly identified, and party
Spears has made no express identification of such differences,
either in Appendix I or in the body of its preliminary motion 3.
Furthermore, paragraph 26(e) of the Standing Order requires
that:
An explanation shall be made in the body of the
preliminary motion (not an appendix) as to why the
subject matter of the claim, as a whole, would have
been obvious to a person having ordinary skill in the
art notwithstanding any difference.
In that regard, Spears in its preliminary motion 3 states only
the following (at page 12):
[tjhe Junior Party respectfully submits that it has
been amply demonstrated that the teachings of the
references themselves, all of which are directed to
converting motion picture film images to video images,
and the nature of the problem to be solved clearly
demonstrates that the prior art references relied upon
(Exhibits 2005 to 2009) may be combined to establish
that Claims 21 and 22 corresponding to the count are
not patentable to the Senior Party under 35 U.S.C. §
103.
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