Interference No. 104,733
Page No. 35
interfering subject matter (633(c)); (ii) substitute a different application (633(d)); or (iii)
add a reissue application to the interference (633(h)). As such, Lilly had the opportunity
to file a motion to redefine the interfering subject matter by adding or substituting a
count or seek to have the claim correspondence changed. See, 37 CFR §§ 1.633(b),
(c) and (i). Rather than file a motion to add or substitute a count, Lilly stated that:
If this interference proceeds, further redefinition of the interfering subject
matter would be necessary and desirable. For example, some
modification of the Count itself will be necessary under 37 C.F.R. §
1.633(c)(1) so that it encompasses the subject matter of the involved
Bang reissue claims currently designated as corresponding to the count.
Otherwise, Lilly could be improperly denied the opportunity to present its
best priority proofs. [Citation omitted]. Such modification of the Count is
not necessary to resolve the interference-in-fact issue that is the subject
of this special motion period, which merely turns on the "same patentable
invention" relationship between the respective claims of the parties
designated as corresponding to the Count. If a Preliminary Motion Period
is set, Lilly will present an appropriate motion to modify the Count itself to
exercise its right to have a count representing its "best proofs." In the
same vein, Lilly will move during the Preliminary Motions Period to
appropriately further modify the scope of the interference by designating
the appropriate claims of the parties as corresponding to the Count.
(Lilly Preliminary Motion 1, Paper No. 22, p. 6, fn. 2).
Under the rules, a preliminary motion under §§ 1.633 (a) through (h) shall be
filed within a time period s et by an APJ . Moreover, the time for filing motions under
§ 1.633 (1) is twenty (20) days after service of the initial motion under rule 633(a), (b),
(c)(1) or (g), unless otherwise ordered by an APJ. 37 CFR §§ 1.636 (a) and (b).
In this case, an APJ set a specific time period for filing motions for no
interference-in-fact or for judgment of unpatentability under 35 U.S.C. § 135(b). (Order,
Paper No. 16). The APJ also set a specific time period for filing responsive rule 633(i)
and 0) preliminary motions. (Order, Paper No. 16). As noted above, Lilly has chosen to
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