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Interference No. 105,058
Schaenzer v. Knight
claims 48 and 57 cancelled. We assume that the latter request is contingent upon the granting of
the former. In any event, party Knight is free to cancel its own application claims at any time
once prosecution of its involved application is resumed after termination of this interference,
without need for approval by the board.
The request to have Schaerizer's claims 3-9 designated as not corresponding to the count
is denied. The request to have senior party Knight's claims 48 and 57 cancelled is dismissed.
Thus, joint preliminary motion 3 is denied-in-par , and dismissed-in-par .
Section 1.637(c)(4)(ii), of Tile 37, Code of Federal Regulations provides that a
preliminary motion seeking to designate an application or patent claim as not corresponding to a
count shall "[s]how 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." Also, per 37 CFR § 1.637(a), a party filing the motion has the burden of
proof to show that it is entitled to the relief sought in the motion. Thus, the initial designation of
claim correspondence in the Notice Declaring Interference is presumed correct and the burden is
on the moving party or parties seeking to change the status quo to make a sufficient showing.
The situation is no different where both or all parties to the interference desire the same relief and
together file a joint motion. A joint motion still has to be supported by sufficient evidence and
the burden of proof still has to be met, or else two parties can circumvent the law by agreeing to
terms which may make economic sense to the parties but lack sufficient legal foundation.
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