Interference No. 104,733
Page No. 24
and Case. Notice of Final Rules, 49 Fed. Reg. 48416, 48421 (Dec. 12, 1984). As
provided above, these three decisions demonstrate that the test for no interference-in
fact is grounded in patentable distinctness. Nitz, 537 F.2d at 545, 190 USPQ at 418;
Aelony, 547 F.2d at 570, 192 USPO at 490; Case, 730 F.2d at 750, 221 USPQ at 200.
As such, a party may demonstrate that no interference-in-fact exists between two
parties by proving that a first party's claim(s) are patentably distinct from the second
party's claim(s).
The test for patentable distinctness is set forth in Rule 601 (n), which states that
an invention "A" is a separately patentable invention, i.e. patentably distinct, with
respect to invention "B" when invention "A" is novel and non-obvious in view of invention
"B" assuming invention "B" is prior art with respect to invention "A". For example, party
A's claims are patentably distinct, i.e., separately patentable, when the party A's claims
are no impediment to the granting of the opponents claims. See, e.g., Nitz, 537 F.2d at
544-45, 190 USPQ at 417-18 (No interference-in-fact where "up to 48%" modifier did
not interfere with "up to 12W modifier); Case, 730 F.2d at 750, 221 USPQ at 200 ("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.").
C. Lilly's Species Anticipates Dominating Genus Theory of Interference-in
Fact Lacks Merit
Lilly argues that for an interference in fact, the interference rules and comments
require nothing more than a "species anticipates dominating genus" determination.
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