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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
Patent Interference No. 105,297
SHIN-ETSU CHEMICAL CO. LTD.
(6,280,898 B1),
Junior Party,
v.
NEC CORPORATION
(09/750,116),
Senior Party.
Entered: 15 July 2005
Judgment - Bd. R. 127(b) - Requested
Before SCHAFER, TORCZON, and MOORE, Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
Shin-Etsu has filed notice (Paper 32) of its abandonment of the contest with
respect to count 2, the sole count. Abandonment of the contest is treated as a request
for adverse judgment. Bd.R. 127(b)(4).
Shin-Etsu further expresses an intent to file a reissue application seeking claims
directed to "subject matter removed from original Count 1", which Shin-Etsu states will
not be subject to estoppel under Bd.R. 127(a)(1). We note that whether an estoppel
exists depends on what precisely Shin-Etsu claims and that estoppel can arise both
under the rule and also from the lost count itself. See In re Deckler, 977 F.2d 1449,
1452, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (claims to patentably indistinct variant of
lost count not patentable). We offer this caveat, not because we doubt Shin-Etsu's
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Last modified: November 3, 2007