Ae arbitrator's decision on priori
12. The arbitrator's decision on priority indicates that, as to Count 2, junior party Wertz has
not proven an actual reduction to practice prior to Rose's constructive reduction to
practice and that Wertz has not proven a conception prior to Rose's conception (Paper 31
at 2).
13. Accordingly, the arbitrator determined that Wertz was not entitled to judgment on priority
as to its claims that correspond to Count 2 (Paper 31 at 9).
Rose terminal disclaimer and amendment
14. Pursuant to requirements set forth in the Order entered 24 April 2002 (Paper 32), Rose
filed:
(1) a terminal disclaimer under 37 CFR § 1.321(b) disclaiming a portion of the term of
any patent issuing from its involving application equal to the amount of time between
9 August 2002 and the date the final arbitrator's decision is filed, and
(2) a paper canceling claim 100 in Rose's 08/435,032 application .2
11. Discussion
The parties have agreed that the arbitrator's decisions shall be binding on the parties and
thatjudgment thereon can be entered by the Board. (See 37 CFR § 1.690(a) and Paper 28). The
arbitrator's decisions are dispositive as to the parties and have been considered by the Board. 37
CFR § 1.690 (c).
2 The pendency of the interference before the Board of Patent Appeals and
Interferences exceeded two years due to delay by the parties. Requiring Rose to file the terminal
disclaimer and to cancel claim 100 (and file a divisional if desired) is intended to minimize any
term extension Rose might receive based on the delay. (See Paper 32 at 3).
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