Interference No. 104,696 Paper 65
Khavari v. Tang Page 7
its disclosed invention then there would not be interfering subject matter.' It is the claims as they
are, however, not the specification, that we must consider in determining the existence of an
interference. In construing the claim, we may not interpolate limitations from the specification
absent some showing that one skilled in the art would understand the claim to include those
limitations. Indeed, the Board must give claims their broadest reasonable construction.
Khavari's showing falls short of justifying the interpolation of additional limitations. Assuming
Tang's claim 167 is supported for its full scope it teaches the application of a DNA vector to
mammalian skin without restriction. One skilled in the art would understand that teaching to
cover skin both with and without hair.
The contested lack of a pretreatment limitation (absence of chemical or mechanical
irritant) presents a similar problem. Since Tang claim 167 does not mention pretreatment, its
plain meaning is that no pretreatment need be used, although pretreatment is not explicitly
excluded. Khavari suggests that we interpolate a pretreatment requirement from the
specification, but Khavari's showing does not justify that interpolation, particularly in view of the
Tang declaration [20051.
Khavari offers an analogy in the request for reconsideration (Paper 35 at 4-5): early
package labeling for the analgesic acetaminophen lacked a warning about using acetaminophen
with alcohol, although subsequently the warning was added. Khavari urges that the first warning
raised by motion under 37 C.F.R. § 1.633(a). (Tang did not expressly provoke this interference.) Khavari has filed a
motion attacking the written description for Tang's claims (Paper 33), but no longer asks for that motion to be decided in
the interference.
4 A prerequisite for the declaration of the interference is an examiner's having allowed at least one involved
claim. 37 C.F.R. § 1.606.
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