Interference No. 105,028
Holbrooks involved a primary examiner’s decision in ex parte practice, it is simply not
controlling here. Failure of a party to fully defend itself against the motion of an opponent in an
inter partes proceeding such as this does so to its own peril.
We find the Declaration of Dr. John Davies persuasive to the extent it supports Bacchi’s
position on this issue of whether Holbrooks satisfies the written description requirement of
35 U.S.C. § 112, first paragraph. Holbrooks did not attack the declaration specifically as to
content. The junior party’s argument that the declaration should not be considered because it
was submitted without obtaining authorization under 37 CFR § 1.639(c) is not persuasive
because § 1.639(a) of the rule authorizes the filing of proof of any material fact alleged in a
motion and § 1.639(b) authorizes the filing of proof in the form of affidavits. Holbrooks’ only
other argument with respect to the declaration -- that Dr. Davies has experience far in excess of
that of one of ordinary skill in the art -- is also not persuasive because it is established that an
expert witness who has more than ordinary skill in the art is qualified to provide his opinions
concerning matters of what would be obvious to persons of lesser skill than his own. Moore v.
Westbar Corp., 701 F.2d 1247, 1253, 217 USPQ 684, 689 (7th Cir. 1983).
Whereas Holbrooks’ involved claims are unpatentable to it under 35 U.S.C. § 112, first
paragraph, Bacchi’s position that the claims are unpatentable to Holbrooks under 35 U.S.C.
§ 102(b) is dismissed as moot.
Bacchi’s Motions 1, 2 and 4-7
These motions are dismissed as moot in view of our findings, above, with respect to
dispositive Bacchi Motion 3.
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