Interference No. 104,696 Paper 65
Khavari v. Tang Page 8
was generic (in the sense that it permitted use with or without alcohol) to the second warning.
While Khavari's point is literally true, it does not follow that the second label was novel or
unobvious. Indeed, had an applicant attempted to patent the method of administering
acetaminophen without alcohol the claim would have undoubtably been rejected over the earlier
label as an anticipated or obvious from the earlier label. The burden of going forward would
have then shifted to the applicant to show that either alcohol co-administration was an inherent
element of the earlier label or that non-administration of alcohol produced an unexpected result.
Similarly, in the present case, Tang's claim 167 on its face does not require the elements that
Khavari has excluded by limitation.' Thus, on its face, Tang claim 167 describes the same
invention unless Khavari makes a showing of an inherent difference or shows unexpected results.
As explained in the original decision denying Khavari's motion (Paper 28 at 3), a motion for
judgment that there is no interference-in-fact is not a vehicle for contesting the patentability of
Tang's claims, hence Khavari had to make its showing without attacking the support for the
claims. It failed to do so here.
Since Khavari claim I and Tang claim 167 appear to define the same invention, we need
not reach the question of whether the other claims provide a basis for an interference.
Tang's motion
Tang has also moved for no interference-in-fact. Tang first argues that the claims
comprising the count are different because its claim 167 excludes invasive procedures, while
Khavari claim I does not. Tang suggests (Paper 42 at 5) that one skilled in the art would
5 Although so-called negative limitations are no longer automatically considered indefinite, this case shows
their limitations in overcoming prior art.
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