Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 20
our judgment would be limited to involved claims. Miscellaneous motions are not, on
the face of the rule, so limited. Nevertheless, we read 35 U.S.C. 135(a), which provides
in part:
A final judgment adverse to a patentee from which no appeal or other
review has been or can be taken or had shall constitute cancellation of the
claims involved in the patent....
to limit the scope our judgment to claims designated as corresponding to a count.
For the purposes of this proceeding, inequitable conduct before the United
States Patent and Trademark Office is defined in paragraph (a) of 37 C.F.R. § 1.56
[Rule 561.
[62] The 1992 version of Rule 56 was in force during the prosecution of the McDonald
666 patent.
The 1992 rule has since been slightly amended, but neither party has asserted a
reliance interest in the 1992 version of the rule as opposed to the existing rule. Under
Rule 56(a):
(a) A patent by its very nature is affected with a public interest. The public
interest is best served, and the most effective patent examination occurs
when, at the time an application is being examined, the Office is aware of
and evaluates the teachings of all information material to patentability.
Each individual associated with the filing and prosecution of a patent
application has a duty of candor and good faith in dealing with the Office,
which includes a duty to disclose to the Office all information known to
that individual to be matedal to patentability as defined in this section. The
duty to disclose information exists with respect to each pending claim until
the claim is cancelled or withdrawn from consideration, or the application
becomes abandoned. * * * However, no patent will be granted on an
application in connection with which fraud on the Office was practiced or
attempted or the duty of disclosure was violated through bad faith or
intentional misconduct. * * *
Material to patentability is defined in Rule 56(b) as:
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