Interference No. 104,8 3 3
Page No. 18
seeks benefit of its German application for all alternatives of the count, including original counts
I and 2, as to its reissue application (Hazes preliminary motions 4, 6, and 8). Bries preliminary
motion 4 seeks leave to add claims 86-90 to its application, which are similar to Hazes reissue
application claims, except that the proposed claims eliminate the ratio.
During oral argument, counsel for 3M agreed that if the panel determined that Hazes
should not be accorded benefit of its German application for the purposes of priority with respect
to its involved patent, that Hazes would also not be entitled to the benefit of the German
application for its reissue application that it seeks to add to the interference (Paper 114 at 22-24).
Indeed, all of the variations of the count(s) in contemplation of adding the Hazes reissue
application, include 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. As discussed in connection with Hazes preliminary motion 7, Hazes has failed to
direct us to where in the German application that the inventors had contemplated a film strip that
is both plastically or elastically extensible and that exhibits an adhesion less than its. cohesion, the
adhesion of which disappears on extension. Hazes failed to sufficiently demonstrate that the
German application's two mutually exclusive dependent claims 5 and 6, without more, constitute
an enabling embodiment within the scope of the various counts.
Counsel for 3M agreed that if the reissue application was added solely for the purpose of
entering judgment against it, on the basis that Hazes was not entitled to the benefit of its German
patent application for its reissue application, then there would be no reason to decide the
remaining preliminary motions regarding count and claim construction with respect to Hazes
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