Interference No. 105,028
application is anticipated by Bacchi’s PCT Publication WO 00/33359, which was published
June 8, 2000.
Holbrooks opposes by arguing that rest pad 24 of Figure 4 of Bacchi’s involved patent is
the same as, or equivalent to, the Holbrooks finger 105 shown in its Figures 1 and 2, and
operates in the same manner. Holbrooks submits that one skilled in the art would recognize that
the profile of its finger 105 or 205 (Figure 9) and the post 103 or 203, with a wafer being held,
would look as shown in Attachment B to its opposition, and not as represented in the Bacchi
motion at pages 8, 10 or 11.
The junior party argues to the effect that its claims were examined by a primary examiner
and were ultimately found to comply with the requirements of 35 U.S.C. § 112, first paragraph.
It is urged that once an examiner accepts the sufficiency of an interfering party’s specification
that party has no further obligation to prove, by extrinsic evidence that the specification was
enabling. Fiers v. Revel, 984 F.2d 1164, 1172, 25 USPQ2d 1601, 1607 (Fed. Cir. 1993).
Holbrooks submits that the Declaration of Dr. John Davies should not be considered
because it is testimony to support a preliminary motion and was submitted without obtaining
authorization under 37 CFR § 1.639(c). It is urged that Dr. Davies is not qualified to provide his
opinions because he has experience far in excess of that of one of ordinary skill in the art.
Lastly, it is urged to the effect that because Bacchi’s motion has no merit with respect to
the issue of written disclosure, involved Holbrooks Application No. 09/940,837 (Application
4/4) is entitled to benefit of its three parent applications, and the WO 00/33359 application
published June 8, 2000 is not prior art to it.1
1 The three parent applications are referred to by the parties as Application 3/4, Application 2/4, and Application 1/4.
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