Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 19
meaningless. Having argued one way during prosecution, McDonald will not now be
permitted to reverse course now.
(581 McDonald also proposes a new count (Paper 141 at 25).
[59] The earlier decision on reconsideration (Paper 95 at 7) explains how this new proposal
is untimely.
Miyazaki prelimina[y motion 1
[60] McDonald contends that the polypeptide of Miyazaki 083 claim 18 should not be an
alternative of the count (Paper 141 at 22-23) because the other alternatives in the count
are directed to methods of using such polypeptides.
McDonald has not provided any new reason for departing from the decision on
motions or the first reconsideration of that decision. In any case, the issue is moot.
The addition of the polypeptide alternative did not change the benefit dates accorded to
the parties because McDonald did not oppose the according of an earlier benefit date
for either the original count 1 or for the substituted count 5 (Paper 95 at 33). Miyazaki
did not put on a separate priority case (and thus did not put on an earlier proof to the
polypeptide rather than the method). Consequently, the presence or absence of the
polypeptide alternative in count 5 has no effect on the outcome in this case.
INEQUITABLE CONDUCT
[61] Miyazaki moves under 37 C.F.R. § 1.635 for a holding that the claims in McDonald's
666 patent are unenforceable.
We note that Miyazaki moves under § 1.635 (miscellaneous motions) rather than
§ 1.633(a) (unpatentability of involved claims). Under the latter section, the scope of
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007