Interference No. 104,696 Paper 65
Khavari v. Tang Page 9
understand Khavari's claim to embrace scarification and wounding. It is not clear how this
argument accounts for Khavari's express exclusion of chemical or mechanical irritants .6 Indeed,
Khavari's preferred embodiment requires intact skin. Cf. Gent[y GalleKy. Inc. v. Berkline Corp.,
134 F.3d 1473, 1477, 45 USPQ2d 1498, 1501 (Fed. Cir. 1998) (noting that a claim construction
that excludes the preferred embodiment is suspect). This proceeding presents the curiosity of
each party arguing that a difference exists because its claim requires intact skin, but the
opponent's claim does not. We find that Tang claim 167 and Khavari claim I both teach use of
the method on intact skin.
Tang also argues that Khavari claim I does not teach a protective systemic immune
response. According to Tang's motion a protective systemic immune response is a vaccination.
Khavari explicitly teaches that its method contemplates vaccination.
Again, since Tang claim 167 and Khavari claim I appear to interfere, we need not reach
the question of whether the other claims also provide a basis for an interference.
Conclusion
Although both parties have moved for judgment of no interference-in-fact, their
arguments are mutually contradictory and ultimately unpersuasive. The Board, on behalf of the
Director, remains of the opinion that the subject matter of Khavari claim I and Tang claim 167
interfere.
6 Tang casually refers to its other motions but does not explain their relevance with anything approaching
specificity (at 5). Incorporation of arguments from other papers is expressly prohibited in the Standing Order (Paper 2,
§ 13). In any case, as previously explained, a motion for no interference-in-fact is not the place for unpatentability
arguments. The analysis proceeds on the basis of what the claims are, not what the movant thinks they should be.
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