Interference No. 104,733
Page No. 21.
According to the Federal Circuit, the question of materiality of the omitted
limitations was one of fact. Id. The Court noted that both the district court and the
Board had determined that the omitted weight limitations were not material as the range
of proportions was quite broad and that Case's prosecution history demonstrated that
the omitted limitations were not pertinent to patentability.
Additionally, Case argued that there was no interference-in-fact as the counts
were unpatentable. Having reviewed Case's arguments, the Federal Circuit stated that:
No interference in fact means that there is no interfering subject
matter, that Case's patent is no impediment to granting CPC the
claims of its application. It was Case's burden to prove that CPC claims
a different invention from his own. Case cannot carry that burden with
argument that the counts are unpatentable.
Id. (emphasis added). The Federal Circuit also stated that "[i]n sum, since the Case
patent and the CPC application contain interfering subject matter, an interference
proceeding was appropriate." Id. at 752, 221 USPQ at 202. The Court then went on to
uphold the decision awarding priority of invention to CPC based upon its earlier
application. Id.
As apparent from the decision in Case, the question of no interference-in-fact
turns on whether or not the parties claims are "materially" different. The question of
11material" differences being one of fact. Further, Case specifies that no interference-in
fact exists where one party's patent does not impede the grant of another party's
claims.
Id.
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