Interference No. 104,733
Page No. 20
oxyalkylated polysaccharide Was employed in an amount of 5 to 95% by weight. During
examination, CPC's claims were rejected as lacking sufficient written descriptive
support under 35 U.S.C. § 112, 1 st paragraph, for the copied weight limitations. The
examiner, however, advised CPC to submit claims directed to "a polyether polyol which
is the reaction product of starch and the various disclosed derivatives thereof with
glycerin and propylene oxide." Id. In response to the examiner's rejection of the copied
claims, CPC canceled the copied claims and submitted new claims that complied with
the examiner's suggestion. Id. The newly added CPC claims, however, did not recite a
particular weight limitation for the two oxyalkylated components. Moreover, when the
interference was declared, the counts did not recite the weight limitations found in
Case's patented claims.
Case presented numerous arguments challenging both the district court and the
Board's award of priority to CPC. Of interest, Case argued that no interference-in-fact
existed between Case's claims and CPC's. According to Case, the question of no
interference-in-fact turned on whether or not the weight limitations present in Case's
claims, but not CPC's claims, were material. The Federal Circuit agreed with this
ana IySiS.7 Id. at 750, 221 USPQ at 200.
7S pecifically, the Federal Circuit stated:
Case challenges the declaration of the interference on the ground that no
interference in fact exists. Relying on Nitz v. Ehrenreich, 537 F.2d 539,
190 USPQ 413 (CCPA 1976), Case argues that the question of
interference in fact turns on whether or not the weight limitations present
in the claims of Case's patent but omitted from the counts are material.
We agree with this analysis but we see no departure by the board or the
court in stating the law or applying it to the facts of this case.
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