preliminary motions was held April 27, 2004. The motions have been decided by this panel as
follows (Paper 61):
1. Sieling’s Preliminary Motion 1 (Paper 22), seeking a judgment that there is no
interference-in-fact between any of Sieling’s and McCumber’s involved claims, was denied;
2. Sieling’s Preliminary Motion 2 (Paper 26), seeking a holding that McCumber’s
Claims 105, 109 and 116-118 are unpatentable over certain prior art, was denied as to Claim 105
and granted with respect to Claims 109 and 116-118;
3. Sieling’s Preliminary Motion 3 (Paper 27), seeking a judgment that McCumber Claim
120 is not supported by a written description in McCumber’s original disclosure as required by 35
U.S.C. § 112, ¶ 1, was denied;
4. Sieling’s Preliminary Motion 4 (Paper 28), seeking to designate Sieling’s Claims 13
and 14 as not corresponding to the count, was denied; and
5. McCumber’s Preliminary Motion 1 (Paper 31), seeking to substitute a different count,
was denied.
Having decided the preliminary motions, it is now appropriate to enter the priority phase of
this interference. Sieling as the junior party has the burden of proof on the issue of priority. 37
CFR § 1.657. Sieling’s Preliminary Statement (Paper 25) alleges an earliest date of invention of
August 11, 1998. This is subsequent to the September 17, 1997, filing date of McCumber’s involved
application. Since Sieling can not prove a date of invention earlier than the date alleged in the
preliminary statement (37 CFR § 1.629), Sieling can not prevail on priority. As the parties have
been given a full opportunity to present evidence supporting their respective motions and elicit
testimony during the preliminary motions phase by cross-examination of the opponent’s witnesses,
and a panel of this board has issued a decision on their motions, there is no reason to set an
additional testimony period and no reason to enter an order to show cause.
ORDER
It is
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Last modified: November 3, 2007