Interference No. 105,297 Paper 33
Shin-Etsu Chemical Co. Ltd. v. NEC Corporation Page 2
good-faith intent and ability to file appropriate claims, but rather to avoid any
misapprehension about the examiner's authority and duty to examine the reissue claims
independently in view of the lost count and the prior art. See In re Johnson, 558 F.2d
1008, 194 USPQ 187 (CCPA 1977) for an example of claiming around a lost count.
Shin-Etsu is correct that once the interference is terminated, the reissue
application may be filed in the ordinary way and any patentability issues may be worked
out through the ordinary reissue application examination process.
DECISION
In view of Shin-Etsu's concession, it is:
DECIDED that judgment on priority for the subject matter of count 2 is awarded
against Shin-Etsu;
FURTHER DECIDED that Shin-Etsu claims 1-20, which correspond to count 2,
are cancelled; and
FURTHER DECIDED that a copy of this decision be entered in the administrative
records of Shin-Etsu patent 6,280,898 B1 and NEC application 09/750,116.
/Richard E. Schafer/
Administrative Patent Judge
BOARD OF PATENT
/Richard Torczon/
APPEALS AND
Administrative Patent Judge
INTERFERENCES
/James T. Moore/
Administrative Patent Judge
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Last modified: November 3, 2007