Interference No. 105,125
Chaffee v. Skulnick
count or uses an equivalent. As was stated by the Court of Appeals for the Federal Circuit in
Hitzeman v. Rutter, 243 F.3d 1345, 1354, 58 USPQ2d 1161, 1167 (Fed. Cir. 2001), "nothing is
better settled in patent law than that in interference cases express limitations in counts may not be
ignored," citing McBride v. Tegple, 109 F.2d 789, 799, 44 USPQ 523, 533 (CCPA 1940). All
limitations in interference counts are regarded as material to the invention covered by the counts.
Hitzeman, 243 F.3d at 1354, 58 USPQ2d at 1167; Meitner v. Corte, 537 F.2d 524, 530, 190
USPQ 407, 412 (CCPA 1976).
The Original Rule 608(b) Evidence
Junior party Thomas J. Chaffee's originally submitted evidence under 37 CFR § 1.608(b)
fails to establish a prima facie case of entitlement to judgment relative to the senior party
patentee because the submitted photographs do not show the top, bottom, rear, and lateral side
views of the ornamental design of the boat fender being illustrated in the photographs. We find
that the photographs do not illustrate a boat fender embodying all of the ornamental design
features of the count as defined by either the junior party's sole application claim or the senior
party's sole patent claim. The design claim of both parties include ornamental features on the
top, bottom, rear, and lateral sides of the boat fender. For instance, both lateral sides must have a
circular contour, and one side has a small circular pattern enclosing an elongated finger.' The
3 The small pattern enclosing an elongated finger is not illustrated in broken lines to
indicate something that is a part of the environment but not a part of the claimed design. See
Manual of Patent Examining Procedure § 1503.02 IN. There is no basis to assume that it depicts
a purely functional element and not some part of the ornamental design. Even counsel for the
junior party admitted during oral argument that he is not sure that it depicts a functional valve.
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