Interference No. 104,733
Page No. 17
and that the limitation was not necessary for the patentability of Nitz's claim. As such,
the CCPA determined that Nitz's "woundup" limitation was not a material limitation of
Nitz's claim and that an interference-in-fact existed with respect to count 2.
Nitz is consistent with the principle that there is no interference-in-fact when two
parties are claiming "materially" different inventions. Further, Nitz is consistent with the
principle that, for purposes of no interference-in-fact, claims of different scope can be
separate patentable inventions even where one party's claim is literally encompassed
by a second party's claim. Specifically, the CCPA found that Nitz's claimed "up to 12%
by weight" modifier was a materially different invention from Ehrenreich's claimed "up to
48% by weight" modifier even though Nitz's claimed amount of modifier was literally
encompassed by Ehrenreich's claimed amount of modifier.
2. Aelony v. Ami
Aelony concerned an appeal from a decision of the Board awarding priority of
invention to Arni, the senior party. The subject matter of the interference was a method
for purifying malononitrile. In particular, both parties treated an impure malononitrile
with a conjugated diene in a Diels-Alder reaction to aid in the removal of impurities. Of
note, Aelony taught the use of cyclopentadiene, a conjugated diene. In contrast, Arni
did not specifically describe or claim cyclopentadiene as a suitable Diels-Alder reaction
component for the removal of impurities. Rather, Arni specifically described eight other
materials having conjugated double bonds as suitable for undergoing a Diels-Alder
reaction for the removal of impurities. Aelony v. Ami, 547 F.2d 566, 567, 192 USPQ
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