Interference No. 105,028
Preliminary Matter
I.
In its oppositions to Bacchi Motions 3-7, Holbrooks requests that each of the motions be
dismissed because they violate Standing Order § 28 requiring that motions be limited to 25
pages. At page 8 of its opposition to Motion 3, Holbrooks contends that all of the motions,
move the Board to find claims 17-23 and/or 26-27 to be unpatentable under 35 USC
§ 112(1) and invalid as anticipated under 35 USC § 102(b) for the [sic] substantially the
same reasons, in regard to substantially the same terms and features alleged to be
unsupported by the specification, and based on substantially the same alleged facts
violates the page limitation set forth in the Standing Order.
Holbrooks’ request is denied. In this decision, we address only Motion 3 of Bacchi and
this paper is not more than 25 pages long.
Furthermore, even if we considered it advisable to address all the issues in Motions 3-7
on the merits, we would not grant Holbrooks’ request. We do not agree with the junior party that
these motions are based on “substantially the same reasons.” First of all, Motions 3-5 and 7, and
Motion 6, are based on different statutory grounds. Motions 3-5 and 7 are based on the first
paragraph of 35 U.S.C. § 112, whereas Motion 6 is based on the second paragraph of the statute.
Furthermore, even where the statutory ground in the motions is the same (e.g., Motions 3-5 and
7), different groupings of claims are involved, and the arguments in the motions relate to
different claim limitations. Compare the different groupings of claims in the three groups
comprising Motion 3, Motions 4 and 5, and Motion 7.
Bacchi Preliminary Motion 3
Bacchi moves for judgment against Holbrooks pursuant to 37 C.F.R. § 1.633(a) on the
ground that all of Holbrooks’ corresponding claims are unpatentable to Holbrooks for failure to
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