Interference No. 104,733
Page No. 15
subject matter that was claimed by both parties. In reviewing Nitz's arguments with
respect to count 1, the Board recommended to the Commissioner that the interference
be dissolved. Specifically, the Board viewed Nitz's limitation of up to 12 weight percent
of a friction modifier as defining a patentably distinct invention from that of count 1,
which required up to about 48 weight percent of the friction modifier. The
Commissioner, however, disapproved of the recommendation as the Commissioner
was of the opinion that the amount of the modifier was not a critical limitation and that
there was no basis for Nitz and Ehrenreich's claims to exist in separate patents. As to
count 2, the Board determined that the count's failure to recite the term "woundup," as
found in Nitz's claimed carbonized layers, was not a patentable distinction.
Additionally, Nitz raised the issue of Ehrenreich's "right to make count 1." As to
this issue, the Board determined that Ehrenreich's disclosure was sufficient to support
the limitations of the count. Having decided the issues of no interference-in-fact and
right to make the counts, the Board awarded priority on both counts to Ehrenreich. Nitz
appealed.
In reviewing the question of interference-in-fact and the court's jurisdiction to
consider that issue, the CCPA stated:
The existence of common subject matter defined by the interference
count is a prerequisite for an award of priority, i.e., the existence or
nonexistence of interfering subject matter goes to the very foundation on
which an interference rests. Determination of the presence or absence of
interfering subject matter is "logically related" to the jurisdiction-conferring
issue of priority because that determination necessarily precedes a priority
award.
537 F.2d at 543, 190 USPQ at 416.
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007