Interference No. 104,733
Page No. 27
The comments to the rules regarding the test for "same or separate patentable
inventions" are highly relevant and material to the issues raised in this interference as
they inform the public that a genus and a patentably distinct species are separate
patentable inventions. If the rule were only applied in the manner suggested by Lilly,
i.e., nothing more than species anticipates dominating genus, then the comments to the
rule that a species that is patentable over a genus is a "separate patentable invention"
from the genus would make no sense. Specifically, Lilly's argument would have us
determine that the species and dominating genus defined both the same patentable
invention and, at the same time, a separate patentable invention. Consistent with the
precedential Federal Circuit and CCPA opinions mentioned above, the comments to
rules explicitly provide that a patentably distinct species and a dominating genus are
separately patentable inventions.
2. Lilly and UW's Corresponding Claims Are Separate Patentable Inventions
As UW's Corresponding Claims Do Not Impede the Grant of Lilly's
Corresponding Claims
The test for no interference-in-fact is whether or not the parties are claiming
separately patentable inventions. In applying this test, we begin with a comparison of
the parties' corresponding claims as there exists a rebuttable presumption that each
considered as prior art), in order for an interference to have both a species count and a
genus count. The answer to this was no. Notice of Final Rules, 49 Fed. Reg. 48,416,
48432-434 (Dec. 12, 1984). Note, the test for no interference-in-fact and the addition of
new count is essentially the same, i.e., patentable distinctness. See, e.g., Hester v.
Allgreier, 646 F.2d 513, 521, 209 USPQ 370, 378 (CCPA 1982).
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