Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 9
11. After the interference was declared, preliminary motions were filed by both
parties. As a result of the MEMORANDUM OPINION and ORDER (Paper 56),
(a) Nichols reissue application 09/625,018 (Ex 2010) with reissue claims 1-42
was added to the interference and Nichols reissue claims 1-281 were designated as
corresponding to the Count (Paper 56, pp. 9-32, "Nichols preliminary motion 3 ,);2
(b) Nichols preliminary motion 1, alleging that involved Tabakoff claims 11 -15,
18 and 19 are unpatentable under 35 U.S.C. § 102(f) for incorrect inventorship, was
deferred to final hearing (Ld., pp. 33-36);
(c) Nichols preliminary motion 3, alleging that Tabakoff acted inequitably by
failing to inform the PTO of Nichols' inventorship claim, was deferred to final hearing
(Ld., pp. 42-44); and,
(d) Tabakoff preliminary motion 1, alleging that Nichols claims 1-15 are
unpatentable for failing to satisfy the best mode requirement of § 112, 11, was denied
without prejudice, subject to renewal based on evidence acquired during the priority
phase of the interference or other evidence developed as result of priority phase
testimony (id., pp. 37-42).
12. Subsequently, a schedule was set for the priority phase of the interference. Only
Nichols filed any evidence on priority. Tabakoff elected to rely on the June 6, 1997
filing date of its provisional application 60/048,848 as a constructive reduction to
1 Nichols reissue claims 1-15 are identical to originally issued claims 1-15.
2 Nichols reissue claims 29-42 were designated as not corresponding to the Count; and, are
unpatentable for failure to comply with the written description requirement of 35 U.S.C. § 112, % 1. In
addition, there is no interference-in-fact between Nichols reissue claims 29-42 and Tabakoff claims 16-17
(which the examiner has found to be patentable). [Paper 56, p. 32, n.3.]
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