Interference No. 104,733
Page No. 25
Thus, according to Lilly, its claimed species is the "same patentable invention" as UW's
claimed genus based on the fact that its species would anticipate UW's genus.
Lilly states that the comments specifically inform the public that the test under
Rule 601 (n) for determining the "same" patentable invention could not be applied two
ways, i.e. a party need only demonstrate "one-way" anticipation or obviousness for an
interference-in-fact. Specifically, Lilly has argued that:
The regulations of the PTO, 37 CFR §1.601 (n), having the force and
effect of law, require nothing more than the "species anticipates
dominating genus" determination to establish the existence of an
interference-in-fact. Indeed, the official commentary issued by the PTO at
the time the rules were adopted made clear that the test for the "same
patentable invention" under 37 CFR §1.601 (n) could not be applied two
ways. 49 FIR 48416 at 48434 (Dec. 12, 1984). As stated by the PTO in
the administrative history for the regulations, the "same patentable
invention' [test] ... under §1.601(n) ... [is] not intended to be
'applied in a mutuality sense."' [Footnote omitted].
(Lilly Preliminary Motion 1, Paper No. 22, p. 5, emphasis added). Additionally,
responding to comments from UW, Lilly stated:
In response to a specific question posed by one commentator in 1984
asking whether the PTO's proposed Rule 1.601 (n) would involve a one
way or two-way patentability determination, the Office responded in
unequivocal terms that a one-way test would be applied. Notice of Final
Rules, 49 Fed. Reg. 48,416, 48,433 (1984). Six years later this rule was
restated by the Board in Chiong v. Roland, 17 U.S.P.Q.2d 1541, 1544
(Bd. Pat. App. & Int. 1990)("As pointed out in the Notice, supra at 48433,
the standard of patentability will not be applied on a 'mutual basis."')
(Lilly Reply 1, Paper No. 30, pages 8-9, emphasis added). This panel has reviewed the
comments to the rules and finds no merit in Lilly's "species anticipates dominating
genus" test.
Lilly has relied upon two specific comments to the rules. The comments may be
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