Interference No. 104,733
Page No. 16
As to the question of no interference-in-fact, the CCPA compared the disclosure
and claims of Nitz with the count and the disclosure of Ehrenreich. According to the
CCPA:
In the case before us the materiality of the questioned limitation and its
variation must be determined in a two-step process wherein the first
inquiry is [1] whether the variation changes a material aspect of the
patentee's invention (here, whether the maximum amount of friction
modifier of "up to 12 percent by weight" is a material limitation) and, if that
inquiry be decided in the affirmative, the second inquiry is [2] whether the
variation is itself a material variation (here, whether "up to 48% by weight"
results in the counts being drawn to a different invention).
Id. at 544, 190 USPQ at 417.
Conducting the two-step inquiry, the CCPA focused on Nitz's description that at
least 80 weight percent carbon was a critical feature of the invention and the limitation
that the modifier was present in an amount "up to 12% by weight." Furthermore, the
CCPA focused on Ehrenreich's disclosure of using up to 48% by weight modifier, which
would allow for a maximum of 52% by weight carbon. Id. at 544, 190 USPQ at 417-18.
The CCPA determined that Nitz's claim recitation of "up to 12% by weight" of a
modifier was a material limitation due to the critical nature of having at least 80%
carbon. The CCPA then determined that the count language "up to about 48% by
weight" of the modifier was a material variation from Nitz's claimed invention. As such,
the CCPA concluded that no interference-in-fact existed with respect to count 1. Id. at
545, 190 USPQ at 418.
As to count 2, the'only issue on appeal was the materiality of Nitz's recitation that
the carbonized layers of filamentary materials were "woundup" layers. The CCPA,
however, determined that the structure of woundup layers was known in the prior art
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