Subparagraphs (j) and (n) of Rule 601 together implement holdings of the former Court of Customs
and Patent Appeals. See, e.g., Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977) (an
interference-in-fact held to exist between a claim to a method of using cyclopentadiene and a claim
to a method using butadiene, isoprene, dimethylbutadiene, piperylene, anthracene, perylene, furan
or sorbic acid; the claims were held to be directed to the same patentable invention even though they
did not overlap in scope). See also Notice of Final Rule, Patent Interference Cases, 49 Fed. Reg.
48416 (Dec. 12, 1984) (see Example 16 at 48421 and Example 20 at 48424).
Under paragraphs 1.601(n) and 1.601(j), the determination of interference-in-fact is a two-
way unpatentability test. Eli Lilly & Co. v. Board of Regents of the University of Washington, 334
F.3d 1264, 67 USPQ2d 1161 (Fed. Cir. 2003); Winter v. Fujita, 53 USPQ2d 1234, 1243 (Bd. Pat.
App. & Int. 1999). As noted in Winter:
The claimed invention of Party A is presumed to be prior art vis-a-vis Part B
and vice versa. The claimed invention of Party A must anticipate or render
obvious the claimed invention of Part B and the claimed invention of Party
B must anticipate or render obvious the claimed invention of Party A. When
the two-way analysis is applied, then regardless of who ultimately prevails on
the issue of priority, the Patent and Trademark Office (PTO) assures itself
that it will not issue two patents to the same patentable invention.
53 USPQ 2d at 1243. On the other hand, the determination of no interference-in-fact, is a one-way
patentability test. That is, the movant must show that none of a party’s involved claims, when
presumed to be prior art, will anticipate or render obvious any of the opponent’s claims.
The parties argue that when Stiller’s claims are taken as presumed prior art, none of the
claims anticipates or renders Heid’s claims obvious. The parties have identified four limitations that
are present in each of Heid’s claims which are not present in Stiller’s claims:
(1) a transport unit, positioned under specimen holders to "contact" the
specimen holders when transported, as required by Heid Claims 1-3;
(2) a receiving device (for picking up a specimen holder) and a transport
unit that are "vertically movably guided, independently of each other,
on a vertical guide," as required by Heid Claims 18 and 2;
(3) treatment stations (containers) provided with "removable covers," and
a transport unit having a "removal device" to remove a cover of a
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