1 ITRI has filed a reissue application, that includes a preliminary amendment canceling all
2 of ITRI’s patent claims and substituting narrower Claims 10-22. ITRI’s reissue declaration (37
3 CFR § 1.175) acknowledges that “claim 1 does not particularly point out and distinctly claim
4 what is regarded as the invention, in accordance with 35 U.S.C. § 112, second paragraph.”
5 Exhibit 1001, p. 18.
6 Du Pont acknowledges that its Claim 82--a substantial copy of ITRI’s Claim 1-- has the
7 same indefiniteness problem. Du Pont has orally offered to file an amendment canceling claim
8 82.
9 Both parties desire to return to ex parte examination.
10 Under the particular facts and circumstances it is appropriate to terminate this
11 interference returning jurisdiction to the Commissioner of Patents. The principal basis upon
12 which this interference was declared --an interference-in-fact between ITRI’s Claim 1 and du
13 Pont’s Claim 82--no longer exists. Additionally, both ITRI’s reissue and du Pont’s applications
14 require further examination. An interference is not the best forum for conducting this
15 examination.
16 We terminate this interference with a judgment of unpatentability of ITRI’s Claims 1-9
17 and du Pont’s Claim 82. The termination is without prejudice to any appropriate ex parte
18 examination including suggesting another interference between any patentable claims in ITRI’s
19 reissue and patentable claims in du Pont’s application.1
20 Since no motions were authorized or filed, the estoppel provisions of 37 CFR § 41.127(a)
21 do not apply. However, this judgment finally disposes of ITRI Claims 1-9 and du Pont Claim
22 82. 37 CFR § 41.127(b).
23 ORDER
24 It is
25 ORDERED that ITRI is not entitled to a patent containing Claims 1-9 of Patent
26 6,436,221;
27 FURTHER ORDERED that du Pont is not entitled to a patent containing Claim 82 of
28 Application 09/882,719;
1 This decision does not compel the Commissioner of Patents to reopen prosecution of du Pont’s
application. Any further prosecution is at the discretion of the Commissioner.
2
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Last modified: September 9, 2013