Interference No. 105,019
Correa v. Roberts
application and thus Correa's involved patent is applicable prior art under 35 U.S.C. § 102(a) or
§ 102(e). The arguments about lack of written description is essentially the same as that made in
the context of Correa's preliminary motion 3, albeit here the specification under scrutiny is that of
Roberts' parent application and not Robert's involved application.
Much of the pertinent analysis, if made, would be the same as that discussed in the context
of Correa's preliminary motion 3. We do not, however, regard as efficient use of resources to
address this preliminary motion because Correa's preliminary motion 3 has already been granted
and claim 23 of Roberts has been determined as unpatentable under 35 U.S.C.
§ 112, first paragraph, for lack of written description in the specification.
Accordingly, we do not reach the merits of Correa's preliminary motion 4, which is hereby
dismissed as moot.
E. Correa's Preliminaa Motion 5
By this preliminary motion, Correa seeks to have its claims 5 and 6 designated as not
corresponding to the count. That means Correa must establish that its claims 5 and 6 are directed
to subject matter that is not the same patentable invention as any of Roberts' claims whose
correspondence to the count Correa does not dispute. Standing Order, Paragraph 266). The
term "same patentable invention" is defined in 37 CFR § 601(n) which sets forth that invention A
is the same patentable invention as invention B when invention A is either anticipated by or
obvious in view of invention B, assuming that invention B is prior art to invention A.
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