Interference No. 104,717 Paper 30
Laudano v. Dana-Farber Cancer Inst., Inc. Page 6
(applicant estopped from claiming subject matter obvious in view of a claim lost in an
interference). Laudano could not have moved to have its generic claims designated as not
corresponding to counts 4, 6, and 7, and consequently cannot be estopped from any action for
failing to have so moved.
Laudano's options
Having established that Laudano could not obtain relief during the interference, the
remaining question is whether the Office provides a remedy outside the interference. The case
law points to two such remedies that are available to Laudano as an applicant in subsequent
prosecution before an examiner.
Antedating DFCI's proofs
The joint request can be construed as an antedating effort. The Federal Circuit analyzed
this option under 37 C.F.R. § 1.131 in Zletz, 893 F.2d at 322-23, 13 USPQ2d at 1322-23
(footnote and citations omitted, italics in original):
Rule 131 provides an ex parte mechanism whereby a patent applicant may
antedate subject matter in a reference, even if the reference describes the same
invention that is claimed by the applicant, provided that the same invention is not
claimed in the reference when the reference is a United States patent. As
explained in [a CCPA opinion], the disclosure in a reference United States patent
does not fall under 35 U.S.C. § 102(g) but under 35 U.S.C. § 102(e), and thus
can be antedated in accordance with Rule 131. But when the subject matter
sought to be antedated is claimed in the reference patent, Rule 131 is not
available and an interference must be had to determine priority.
Thus a losing party to an interference, on showing that the invention now
claimed is not "substantially the same" as that of the lost count may employ the
procedures of Rule 131 in order to antedate the filing date of the interfering
application. The lost count of the interference is not prior art against a different
invention, for "'prior art' in the sense of section 102(g) cannot be the basis of a
section 102(a) rejection, the invention not being publicly 'known or used'".
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