Interference No. 105,136 Paper 62
Wang v. Imler Page 14
resumption of ex parte prosecution. (FF 28).
Thereafter, Imler sought and was given authorization to file an amendment
cancelling its '007 claims that correspond to the count. (FF 30). We take Imler's
cancellation of its '007 corresponding claims as concession of unpatentability of the
cancelled claims over the prior art cited in Wang preliminary motion 1. (FF 35).
Accordingly, entering judgment against Imler's '007 claims that correspond to the count
is appropriate. The judgment is with prejudice to Imler in that Imler is not entitled to a
patent containing any of the cancelled claims. Imler's cancellation does not unfairly
prejudice Imler in that Imler is entitled to pursue claims before the examiner that are
patentable over the prior art cited in Wang's preliminary motion 1.8 Thus, Imler is in no
worse a position than it would have been had we authorized it to file a responsive
preliminary motion under 37 CFR § 1.633(i).
Wang argued that judgment on priority should be entered against Imler's '007
application under 37 CFR §1.662(a). (FF 33). 37 CFR §1.662(a) states as follows:
A party may, at any time during an interference, request and agree
to entry of an adverse judgment. The filing by a party of a written
disclaimer of the invention defined by a count, concession of priority or
unpatentability of the subject matter of a count, abandonment of the
invention defined by a count, or abandonment of the
contest as to a count will be treated as a request for entry of an adverse
judgment against the applicant or patentee as to all claims which
8 As noted by Imler, it is under an affirmative duty to disclose the prior art
cited in Wang's preliminary motion 1 upon the resumption of ex parte prosecution.
(Paper 39 at 8).
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