Interference No. 104,703
Page No. 8
Count C: Polymers (“MA”) having repeat units polymerized from maleic anhydride.
(See Paper No. 31, Attachments A-C, Paper No. 39, p. 3, ¶ 5). According to both Suwa and
Goodall the three polymers, “AD”, “ROMP” and “MA” have distinct structures and
characteristics and define separate patentable inventions from each other. (Paper No. 39, p. 8).
When there are two or more counts in an interference, each count shall define a separately
patentable invention. 37 CFR 1.601(f). Accordingly, a party moving to redefine the interfering
subject matter must show that each proposed count defines a separate patentable invention from
every other count proposed to remain in the interference. (See 37 C.F.R. § 1.637(c)(1)(v),
emphasis added). A separate patentable invention is defined in 37 C.F.R. § 1.601(n) which states
that:
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".
37 CFR § 1.601(n)(emphasis in original). Accordingly, in reviewing the three proposed counts
for separate patentability, we focus on the patentable distinctiveness of the three counts with
respect to each other.
1. The Three Proposed Counts are Separately Patentable from Each Other
a. Differences Between ROMP and AD Polymers
Suwa alleges that ROMP polymers and AD polymers have different alicyclic repeating
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