Interference No. 104,833
Page No. 12
demonstrate that changing the counts and claims in order for the counts and proposed claims to
be patentable to the moving party is an unacceptable reason for doing so.
Additionally, Hazes argues that it would be unjust to allow Bries to amend the counts and
add claims to its application in order to make Bries whole. The interference rules allow for a
party to amend or add claims to its application, and to amend or add counts to an interference.
The rules do not provide limiting reasons for doing so. Often times, when a party's claims are
attacked, the party with an involved application will respond by moving to amend or add claims,
to amend or change the count(s), in order to overcome the rejection. Such a response is not only
acceptable, but is contemplated by the interference rules. See 37 CFR & 1.633(i).
Hazes also argues that it may not be able to meet the limitation that the film be
"sufficiently extensible for debonding to occur but of sufficient tensile strength so as not to
rupture during debonding" as recited in proposed count 3. However, Hazes' argument is
conclusory. Hazes fails to direct us to evidence that would demonstrate that it could not meet the
above quoted limitation. We will not simply take Hazes word that it may not be able to meet the
limitation without sufficient proof to demonstrate the matter asserted. Johnston v. IVAC CoM.,
885 F.2d 1574, 1581, 12 USPQ2d 1382, 1387 (Fed. Cir. 1989) (mere attorney argument is not a
substitute for evidence of record). Even Hazes does not take a clear position on the matter. It
states that it may not be able to meet the limitation. We will not deny Bries' motion based on
Hazes unsupported assertion that it may not be able to meet a particular limitation.
Lastly, Hazes argues that there is no reason for having two separate counts, since there is
no patentable distinction between the two proposed counts. In its reply, Bries states that it does
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