Interference No. 104,761 Paper'108
Univ. of New Mexico v. Fordham Univ. Page 5
The UNM 332 patent is not prior art against Fordham's claims (except as a basis
for a priority contest under 35 U.S.C. 102(g)(1)/1 35(a)). Moreover, while UNM's
characterization of the prior art might be available as an admission against UNM, it is
hardly e\4dence of unpatentability against Fordham .4
[8] Neither of the Fordharn exhibits now cited appear to have been cited in UNM's
preliminary motion 2.
[9] Both exhibits are 1993 journal articles that list the sole inventor named on Fordham's
involved application, P.K. Srivastava, as a co-author.
[10] UNM has not alleged that the papers in the Fordham exhibits were not available to
UNM at the time it filed its motion.
It is axiomatic that the panel cannot have misapprehended or failed to appreciate
an argument that was never made. Accord Rurnsfeld v. Freedom NY, Inc., No. 02
1105, -1130, 2003 W L 22339495, at *1 (Fed. Cir. 2003) (Argument not raised in
opening brief is waived for purposes of rehearing). Moreover, Fordham was not on
notice of the basis now advanced for the unpatentability of its claims. Consequently,
we do not have the benefit of Fordham's explanation of why its claims would be
patentable despite these additional references. The alleged error in the decision on
motions is our failure to enter what, in effect, would have been a new ground of
rejection.
4 The De cis ion on Motions rioted the a ppa rent admission, but declined to Wd UNIA's claims
unpatentable because the issue had not been developed in the motions process (Paper98 at 47).
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