while a second frame of the mask holder positioning device belongs to the force frame of
the lithographic device.
A party moving to undesignate a claim from corresponding to the count must demonstrate
that the claim does not define the same patentable invention as any other claim whose
designation in the notice declaring the interference as corresponding to the count the party does
not dispute. 37 CFR § 1.637(d)(4)(ii).
As pointed out by van Engelen in its preliminary motion, Lee claim 5 and van Engelen
claim 12 are nearly identical, and depend from nearly identical claims 4 and 10 respectively. As
Van Engelen's analysis is limited with respect to Lee claim 5, so is ours. In its preliminary
motion 4, van Engelen argues that none of the claims render obvious the invention defined by
Lee claim 5 (motion at 11). Van Engelen compares Lee claim 5 with Lee claim 4 and Lee claim
6. Specifically, van Engelen argues that neither claim 4, nor claim 6, nor the combination of Lee
claim 4 and claim 6 teaches the device recited in claim 5, and then proceeds to discuss the
differences between Lee claims 4, 5 and 6. Van Engelen then concludes that since the examiner
determined that the count is patentable over the prior art of record, then Lee claim 5 is also
patentable over the prior art of record (motion at 13).
It is not enough to assert that there is no teaching in the compared claim that would lead
to the claim the party seeks to undesignate, as van Engelen has done here. Absent from the
preliminary motion is a demonstration that van Engelen is unaware of any prior art that would
render Lee claim 5 obvious in view of Lee claim 4 or Lee claim 6, or if it is aware of prior art
that is relevant, that the prior art would not, when combined with Lee claim 4 or Lee claim 6,
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