particular treatment station before a specimen holder is deposited into
the particular treatment station, as required by Heid.Claims 24-26;
and
(4) a transport unit positioned under the specimen holders when
transported and "designed to cover" a treatment station (container),
as required by Heid Claims 30-32).
Paper 40. p. 1. Our review of the claims confirms these differences. Thus, the subject matter of
Stiller’s claims does not anticipate the subject matter of Heid’s claims.
The parties also argue that these differences would not have been obvious. The parties rely
on the testimony of Hans Heid and Helmut Goldbecker. HX 1001 and 1005. They testify that the
references of record in the prosecution histories of the involved patent and application and the
prosecution history of Patent 6,444,170 which is a CIP of the involved patent do not teach these
limitations or suggest their use in the Stiller claims. HX 1005, ¶¶ 20-22. Our independent
consideration of the references does not reveal anything inconsistent with their testimony. The
witnesses also testify that based upon their experience, the differences do not reflect conventional
or routine practices in the art. HX 1005, ¶ 23. We have no reason to doubt their testimony. We hold
that the subject matter of Heid’s involved claims would not be obvious in light of the scope and
content of the prior art and the level of ordinary skill in the art as established in the record.
The parties’ joint motion for no interference-in-fact is granted. A holding of no interference-
in-fact means that each parties’ involved claims are not an impediment to the issuance of the
opponent’s involved claims. Thus both parties may obtain patents. See Notice of Final Rule, Patent
Interference Cases, 49 Fed. Reg. 48416, 48440 (Dec. 12, 1984) ("Two comments questioned the
nature of the judgment when a motion under § 1.633(b) is granted. Section 1.633(b) authorizes the
filing of a [preliminary] motion for judgment on the ground that there is no interference-in-fact. If
a [preliminary] motion under § 1.633(b) is granted, the judgment would provide that each party is
entitled to a patent containing that party's claims corresponding to the count."). Accordingly, we
enter the following Judgment.
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