description. Tronzo, 156 F.3d at 1158, 47 USPQ2d at 1832; Lockwoo , 107 F.3d at 1572, 41
USPQ2d at 1966.
Subpargraph c relates to Bilstad's Figures 5A and 5B and specifically to the four protective
tab members designated 72 and 73, which hold the ends 14 of the objects to be joined. As the
clamps 70 and 71 move towards each other the tab members peel away to expose the ends to be
joined. Bilstad Application 09/294,964, Paper 1, Specification, p. 8. While the peeling of the tabs
may be complex, Prof Colgate does not explain how the peeling provides a manipulation of the
obj ect to be sterilized in a direction additional to the three directions provided by paragraph a. Prof
Colgate's testimony appears to describe movement of the member rather than the objects. Figures
5A and 5B only shows movement of the objects in directions towards each other.
Thus, Prof. Colgate's testimony does not establish that Bilstad's original specification
describes the additions directions asserted.
V1.
We note that the decision to copy Wakalopulos's claims was Bilstad's alone. Bilstad chose
this approach to provoking an interference rather than relying on its own claims and asserting that
the parties each claimed subject matter patentably indistinct from the other. Itis applicant's burden
to precisely define the claim. In re Morris, 127 F.3d 1048,1055-56,44USPQ2d 1023,1029(Fed.
Cir. 1997). An interference exists when each party has a claim which is directed to the same
patentable invention as an opponent's claim. 37 CFR § 1.6010). A party's claim is directed to the
same patentable invention as an opponent when the claim would have been anticipated by or obvious
from an opponent's claim assuming the opponent's claim to be prior art. 37 CFR § 1.601(n). Thus,
for an interference to exist it is not necessary for the par-ties to have identical or nearly identical
claims. Indeed, an interference may exist where there is no common embodiment claimed by the
parties. See ý&, Aelony v. Arm, 547 F.2d 566,192 USPQ 486 (CCPA 1977) (an interference held
to exist between a claim to a method using cyclopentadiene as a dienophile and a claim to a method
using butadiene, isoprene, dirnethylbutadiene, piperylene, anthracene, perylene, furan and sorbic
acid; as the dienophile the claims were held to be directed to the same patentable invention-even
though they did not overlap in scope). In choosing to copy claims rather than relying on subject
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