Interference 104,066
corresponding to the count.5 Accordingly, as the moving party challenging the
examiner’s finding, the burden is on Lee to establish, by a preponderance of the
evidence, that each of its claims designated as corresponding to the count (i.e., claims
1-6), and each of Vogelstein’s claims designated as corresponding to the count (i.e.,
claims 1-3 and 8-23), define inventions which are separately patentable.6 36 C.F.R.
§ 1.637(a) and §1.601(j). See also, Kubota v. Shebuya, 999 F.2d 517, 591 n.2, 27
USPQ2d 1418, 1420 n.2 (Fed. Cir. 1993); Heymes v. Takaya, 6 USPQ2d 1448, 1451
5 37 C.F.R. §1.601(j) provides:
An interference-in-fact exists when at least one claim of a party that
is designated to correspond to the count and at least one claim of an
opponent that is designated to correspond to the count define the same
patentable invention.
6 Contrary to Lee’s statement of the issues (LB, p. 1) and “Precise Relief
Requested” (Paper No. 56, p. 1), the relevant inquiry here concerns the subject matter
of the parties claims designated as corresponding to the count, not what is disclosed
their respective specifications. 37 C.F.R. § 1.601(j).
6
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