Interference No. 104,761 Paper108
Univ. of New Mexico v. Fordham Univ. Page 6
An administrative patent judge may exercise discretion to explore a new ground
of rejection. 37 C.F.R. § 1.641. Moreover, the Board may exercise its discretion to
recommend that an examiner explore the potential rejection, 37 C.F.R. § 1.659. Finally,
we may simply decline to take any action at all.
We decline to proceed under § 1.641 at this late date on what might well prove
to be a blind alley. Since Fordham is an applicant whose application will ultimately be
remanded to an examiner, any remaining questions of unpatentability can be
addressed in that forurn.' Cf. In re Hounsfield, 699 F.2d 1320, 1324, 216 USPQ 1045,
1048 (Fed. Cir. 1983) (refusing to entertain a late rejection but noting that the agency
could explore it on remand). UNM has had its opportunity to make out a case for
unpatentability.
The decision to deny UNM Preliminary Motion 2 has been reconsidered, but
relief from that decision is DENIED.
Reconsideration of Fordham Preliminary Motion 4
[111 Fordham moved to have several additional UNM claims designated as corresponding to
the counts, including having UNM 716 claims 7-12 designated as corresponding to
count 3.
[12] The Board held (Paper 98 at 45):
As noted in the fact-finding, we do not consider the hspl 10 family
proteins of UNM 716 claim 7 to be anticipated by the hsp70 family
proteins enumerated in UNM claims 13, 19, and 25. Moreover, claims 7
5 We note that both of the Srivastava co-authored articles in question are listed as references on the
front cover of the Forham patent that issued from the parent application of Forcham's involved application.
UNM has not suggested that the articles were not previously available to it.
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