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Interference No. 104,833
Page No. 14
Hazes preliminM motions 2 and 7
Hazes, through its preliminary motions 2 and 7, seeks to be accorded benefit of German
Patent Application No. DE 197 26 375, filed 21 June 1997 for the original counts (preliminary
motion 2) and for Bries proposed counts 3 and 4 (preliminary motion 7). Since we have adopted
Bries proposed count 3 as modified, and have substituted original counts I and 2 with count 3,
Hazes preliminary motion 2 is dismissed as moot4. hi order to be accorded benefit, Hazes'
priority application need describe an enabling embodiment within the scope of the count. Weil v.
Fritz, 572 F.2d 856, 865-66 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978); Hunt v. Trepl2schuh,
523 F.2d 1386, 1389, 187 USPQ 426, 429 (CCPA 1975).
Count 3 that has been adopted as discussed above, includes the limitations that (1) the
film strip is elastically or plastically extensible, (2) the film strip exhibits an adhesion less than
its cohesion, and (3) the adhesion disappears on extension. In. its motion 7, Hazes argues that it
has written description for functional limitations (1)-(3) by way of claims 5 and 6 of its German
application. Claim 5 depends from either claim 1 or claim 2. Claim 6 depends from either claim
I or claim 2. Claim 5 recites that the adhesive film strips are "elastically or plastically
extensible." Claim 6 recites that "the adhesion of the adhesive film strips (2, 8) is less than the
cohesion, the adhesion largely disappears on extension ......
Hazes argues that the limitations of the count that are found in two separate dependent
claims in its German application, neither of which depend from the other, satisfies the
' The arguments made with respect to Hazes preliminary motion 2 are essentially the
same as those made with respect to Hazes preliminary motion 7. That is, the disputed language
is contained in original counts 1 and 2 as well as adopted count 3.
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