Interference No. 105,099 Paper 25
Hannum v. Immunex Corp. Page 11
The procedural distinction lies in the fact that Best and King arise in the context
of ex parte examinations rather than interference proceedings. The observation that
the Office is not equipped to test theories, while certainly true, does not extend to
parties in an interference, who are obligated to provide positive proof or live with the
consequences of failing to do so.13
An interference is, by nature, a provisional rejection of each party's involved
claims over the claims of the other party under 35 U.S.C. 102(g). The contested
rejection is the rejection of the Immunex claims over the Hannum claims. The examiner
is correct that, ex parte, a burden could shift to Immunex to show why Hannum's
invention does not anticipate the Immunex claims. In an interference, however, the
burden lies with the movant, 37 C.F.R. § 1.637(a), which is Hannum, not Immunex.
Hannum, the putative reference, insists that it does not anticipate or render obvious the
subject matter of the Immunex claims. The evidence of record supports Hannum's
position so Hannum is under no additional burden to prove its point experimentally.
Instead, the burden has shifted to Immunex to disprove Hannum's contention.
Immunex has declined to do so. Both sides must live with the consequences of their
actions and inactions. 37 C.F.R. § 1.658(c). Neither will be able to provoke an
interference with the other on this subject matter at a later date. Hannum will not be
able to rely on any proofs it may have to the Immunex isoform of flt3 ligand in an
13 This is not to say that a Best-like situation could not arise in an interference. For instance, when
the Board raises a question of patentability under 37 C.F.R. § 1.641, the proceeding may be in the nature of an
ex parte exam ination, particularly whe n the unpatentability appe ars to apply to both parties such that there is
no genuine adversity. This is not the case here. There is no evidence of a settlement or any other indication
that the parties are not dealing at arms length.
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