Interference 103,781
(ii) Show that the claim does not defined [sic] the
same patentable invention as any other claim whose
designation in the notice declaring the interference as
corresponding to the count the party does not dispute.
37 CFR § 1.601(n) defines “same patentable invention” as follows:
Invention “A” is the same patentable invention as
an invention “B” when invention “A” is the same as
(35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention “B” assuming invention “B” is prior art with
respect to invention “A”. Invention “A” is a separate
patentable invention with respect to invention “B” when
invention “A” is new (35 U.S.C. 102) and non-obvious
(35 U.S.C. 103) in view of invention “B” assuming
invention “B” is prior art with respect to invention “A”.
Fischhoff maintains that Claims 41-43 of Fischhoff’s
involved U.S. Application 08/434,105, filed May 3, 1995, and
Claims 13-14 of Adang’s U.S. Patent 5,380,831 (FX 11), issued
January 10, 1995, are directed to separate patentable inventions
from the subject matter defined by all other claims of the
parties designated as corresponding to Count 2 (Paper No. 224,
p. 9). Fischhoff argues that Claims 1-4, 7, 15-17, and 19-22 of
Barton’s U.S. Application 07/827,906, filed January 30, 1992;
Claims 3, 5, and 39-40 of Fischhoff’s U.S. Application
08/434,105, filed May 3, 1995; and Claims 1-12 of Adang’s U.S.
Patent 5,380,831, issued January 10, 1995, all define a genus of
genetic sequences which would not have described a species
defined by any one of Claims 41-43 of Fischhoff’s U.S.
Application 08/434,105, filed May 3, 1995, or Claims 13-14 of
Adang’s U.S. Patent 5,380,831, within the meaning of the word
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