Interference No. 104,733
Page No. 23
which authorized parties to file preliminary motions for judgment on the ground that
there is no interference-in-fact.
In their present form, Rules 6010), 601 (n) and 633(b) read as follows:
Rule 601 a) An interference-in-fact exists when at least one claim of a
party that is designated to correspond to a count and at least
one claim of an opponent that is designated to correspond to
the count define the same patentable invention.
Rule 601 (n) Invention "A" is the same patentable invention as an invention "B"
when invention "A" is the same as (35 U.S.C. 102) or is obvious (35
U.S.C. 103) in view of invention "B" assuming invention "B" is prior
art with respect to invention "A". Invention "A" is a separate
patentable invention with respect to invention "B" when invention
"A" is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in
view of invention "B" assuming invention "B" is prior art with respect
to invention "A".
Rule 633(b) A motion for judgment on the ground that there is no interference
in-fact. A motion under this paragraph is proper only if the
interference involves a design application or patent or a plant
application or patent or no claim of a party which corresponds to a
count is identical to any claim of an opponent which corresponds to
that count. See §§1.637(a). When claims of different parties are
presented in "means plus function" format, it may be possible for
the claims of the different parties not to define the same patentable
invention even though the claims contain the same literal wording.
Rules 6010) and (n): 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR
23123, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995; Rule 633(b): 49 FR 48416,
Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995.
While the rules explicitly define when an interference-in-fact exists, the rules do
not explicitly define "no" interference-in-fact. The comments to the rules, however,
provide that the USPTO will continue to follow the decisions rendered in Nitz, Aelony
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