Patent Interference No. 103,812
According to Rosenquist, "alternative-claims-counts" can restrict a party to a narrower
claim merely because of a difference in the language used. In contrast, a "classical phantom
count," as proposed by Rosenquist, is said to provide "a true level playing field, enabling all
parties to present their best proofs of the invention at issue without disputes over language,
equivalents and the like" (emphasis in original). See RB, pp. 16-17. Specifically, Rosenquist
explains that in this case (RRB, p. 27):
The way the count is now drafted, Rosenquist cannot use any of the Scholl count
claims, because they all contain the limitation "weight average [molecular weight]
determined by light scattering". On the other side of the coin, Scholl argues in its
brief that the Rosenquist proofs do not meet the Rosenquist count claims, because
those claims contain the recitation of "phosgene derivative". Both limitations or
features are removed from the proposed phantom count, the issues disappear, and
both parties can offer their earliest proofs based on the same definition of the
invention, and free of these problems or arguments. [Emphasis in original.]
Rosenquist urges this panel to substitute proposed Count A for Count 2 so that Rosenquist "can
present its earliest priority proofs with a minimum of argumentation over the meaning of the
words of the count." See RB, p. 18.
Rosenquist's arguments are not persuasive. First, Rosenquist is the only party that has
presented a priority case. Senior party Scholl is restricted to the May 20, 1994, filing date of
German patent application P 4417748.8, to which benefit was accorded Application 08/438,516
under 35 U.S.C. § 119. Therefore, it is not necessary to "level the playing field" so that "the
priority proofs of both parties can be measured against the same definition of the invention." See
RB, pp. 18-19.
19
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007