Sauer, Inc. v. Kanzaki Kokyukoki Mfg

INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
The opinion in support of the decision being entered
today is binding precedent of the Interference Trial
Section of the Board of Patent Appeals and
Interferences.
Paper No. 147
Filed by: Trial Section Motions Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JOSEPH E. LOUIS
Junior Party
(Sauer Inc.)
(Patent No. 5,513,717)
v.
HIDEAKI OKADA and SHUSUKE NEMOTO
Senior Party
(Kanzaki Kokyukoki Mfg. Co., Ltd.)
(Application 08/818,964)
_______________
Patent Interference No. 104,311
_______________
BEFORE STONER, Chief Administrative Patent Judge, McKELVEY,
Senior Administrative Patent Judge, and SCHAFER, LEE, TORCZON,
GARDNER-LANE, and MEDLEY, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON SAUER’S MOTIONS 6 AND 7

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A. Background
This interference was declared on February 16, 2000, and
involves (1) Sauer Inc.’s patent 5,513,717 naming Joseph E. Louis
as inventor (hereinafter Sauer) versus (2) Kanzaki Kokyukoki Mfg.
Co., Ltd.'s application 08/818,964 naming Hideaki Okada and
Shusuke Nemoto as inventors (hereinafter Kanzaki).
Sauer filed Motion 6, under 37 CFR § 1.635/1.642, seeking to
add Patent No. 5,473,964, also owned by Kanzaki, to this
interference.
Sauer further filed Motion 7, under 37 CFR § 1.635/1.642, to
add patent No. 5,950,500, also owned by Kanzaki, to this
interference.
In JD v. SH, a trial section precedential decision
(www.uspto.gov/web/offices/dcom/bpai/its/104044.pdf), it was held
that the Board would not add a patent to an ongoing interference
where the opposing party is involved in the interference only on
the basis of patents and not applications. The decision cited to
35 U.S.C. § 135(a), and stated: “Section 135(a) does not
authorize the Commissioner to declare an interference between
interfering patents. Compare 35 U.S.C. § 291, which authorizes a
civil action to resolve priority between interfering patents.”
Upon receipt of Sauer Motions 6 and 7, an order was entered

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stating that Kanzaki need not respond to the merits of Sauer’s
Motions 6 and 7 until the question of whether the Board has
jurisdiction to add Patent Nos. 5,473,964 and 5,950,500 to this
interference has been resolved. Sauer filed a paper explaining
why the Board has jurisdiction and should overrule JD v. SH.
(Paper No. 28). Kanzaki opposed. (Paper No. 62). Sauer replied.
(Paper No. 70).
On July 26, 2000, the parties appeared before the Board for
oral argument with regard to Sauer’s Motions 6 and 7.
B. Discussion
1.
The Board’s jurisdiction for declaring and conducting
interferences is bottomed on 35 U.S.C. § 135(a), which states:
Whenever an application is made for a patent
which, in the opinion of the Commissioner, would
interfere with any pending application, or with any
unexpired patent, an interference may be declared and
the Commissioner shall give notice of such declaration
to the applicants, or applicant and patentee, as the
case may be. The Board of Patent Appeals and
Interferences shall determine questions of priority of
the inventions and may determine questions of
patentability.
Section 135(a) of Title 35, United States Code, does not
authorize declaration of a patent versus patent interference.
Even Sauer appears to be in agreement with that view. The

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“opinion” of the Director in 35 U.S.C. § 135(a) is directed to
“an application.” What Sauer contends is that where one of the
two patents is owned by a party which also has a pending
application drawn to the same patentable invention, then the
Board has jurisdiction to declare an interference involving the
two patents and the application -- i.e., one patent and an
application of one party, on one side, versus one patent of
another party, on the other side. Sauer contends that if an
application from either party is in the picture, the situation is
not a patent versus patent interference and thus the Board has
jurisdiction under 35 U.S.C. § 135(a) to declare and conduct an
interference.
Sauer’s position is based on an erroneous view of § 135(a)
interferences as a means to solve all conflicts between parties
with respect to an invention rather than an administrative tool
for the Patent and Trademark Office to decide whether to issue an
application as a patent. The conflict between parties, insofar
as any interference proceeding in the Patent and Trademark Office
is concerned, arises solely because one or more applications or
patents stand in the way of the issuance of an application under
examination. As we have mentioned above, the “opinion” of the
Director, as is referred to in 35 U.S.C. § 135(a), is directed to

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“an application.”
Moreover, whether it is between two applications, an
application and a patent, or two patents, it is the “claims”
which give rise to a conflict in priority of invention. The
parties have a dispute only because the “claims” in their
respective cases interfere with each other. If no “claim” of one
party interferes with at least one “claim” of another party, then
there can be no interference-in-fact. See, 37 CFR § 1.601(j).
As the Federal Circuit has observed, “the name of the game is the
claim,” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998), citing Giles Sutherland Rich, Extent of
Protection and Interpretation of Claims--American Perspectives,
21 Int' Rev. Indus. Prop. & Copyright L, 497, 499 (1990)("The
U.S. is strictly an examination country and the main purpose of
the examination, to which every application is subjected, is to
try to make sure that what each claim defines is patentable. To
coin a phrase, the name of the game is the claims. (Emphasis in
original)"). It is claims which define what an applicant regards
as his or her invention. 35 U.S.C. § 112, second paragraph.
Thus, an interference between two parties, a first party
with an involved patent and also an involved application, and a
second party with a single involved patent, would necessarily be

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two separate interferences administratively merged into one
proceeding for convenience or efficiency. The first interference
would be directed to a conflict or interference between the first
party’s involved application and the second party’s involved
patent. The second interference would be directed to a conflict
between the first party’s involved patent and the second party’s
involved patent. Viewed properly in this light, the Board does
not have jurisdiction under 35 U.S.C. § 135(a) to declare or
conduct an interference involving parties A and B, where (1)
party A is involved on the basis of patents and no application
and (2) party B is involved on the basis of an application and
one or more patents. Party B's patent does not stand in the way
of examining or issuing Party B's application. What stands in
the way of issuing Party B's application is the existence of
Party A's patent or patents. If there is an interference between
Party A's patent or patents and Party B's patent, 35 U.S.C. § 291
gives an adequate avenue of relief. Section 291 states, in part:
Interfering Patents
The owner of an interfering patent may have relief
against the owner of another by civil action, and the
court may adjudge the question of the validity of any
of the interfering patents, in whole or in part.
Sauer is only partially correct in stating that “[t]he

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purpose of the patent operation in the PTO is to assist the
public in obtaining valid patents and in resolving certain
classes of disputes involving patents and applications.” Sauer
cites no precedential decision, and we are aware of none, which
indicates that the mission or purpose of the Patent and Trademark
Office includes resolving disputes between issued patents. While
it is true that 35 U.S.C. § 6(b) provides that the Board of
Patent Appeals and Interferences shall determine priority and
patentability of invention in interferences declared under
35 U.S.C. § 135(a), it is not apparent to us how we can declare a
patent versus patent interference under 35 U.S.C. § 135(a). It
may well be that Sauer feels that the Patent and Trademark Office
should have authority to cancel patents. However, until Congress
authorizes inter partes "cancellation" proceedings similar to
those authorized in trademark cases (15 U.S.C. § 1064), Sauer
will have to be satisfied with the provisions of law relating to
reexamination. There is no persuasive evidence that Congress
intended for 35 U.S.C. § 135(a) to be a patent cancellation
proceedings based on something other than a pending application
under examination. As § 135(a) notes, a predicate to an
interference is the pendency of an "application" which in the
opinion of the Director interferes with another application or an

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unexpired patent.
Technically, Sauer’s Motions 6 and 7 seek the addition of
Kanzaki patents to this interference and not the declaration of
any additional interference between the patents sought to be
added to this interference and Sauer’s involved patent. But,
where we lack the jurisdiction to declare a patent versus patent
interference, we also lack jurisdiction to add a patent to an
existing interference such that the addition results in a patent
versus patent interference. Sauer may not circumvent the
prohibition by giving the prohibited act another name. Adding a
Kanzaki patent to the interference is the same as declaring
another interference, one between two issued patents, and merging
it into this one.
Sauer points out that Winner Int. Royalty Corp. v. Wang,
202 F.3d 1340, 53 USPQ2d 1580 (Fed. Cir. 2000), is a recent
example of a patent-patent-application interference handled by
the Board, and stated: “While the propriety of the patent-patent
aspect of the interference was not an issue on appeal, the party
Wu (assignee of Winner Int. Royalty Corp.) made the argument
advanced by Kanzaki at the administrative level, and that
argument was soundly rejected by a panel of this board.”
The Board’s opinion in Wu v. Wang noted by Sauer is not binding

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precedent. Sauer has identified no binding precedent of this
Board which need be overruled to clear the way for our decision
here.
Also, nothing expressed herein is contrary to any pre-
existing practice, as argued by party Sauer in its reply, of
treating a motion to substitute a reissue application for the
patent sought to be reissued as a motion to add the reissue
application to the interference already involving that patent.
It is the addition of an issued patent, not a pending reissue
application, to an on-going interference, which causes a problem
under 35 U.S.C. § 135(a).
We are cognizant of the Federal Circuit’s decisions in
Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989)
and Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir.
1998), which generally set forth that when issues have been
fairly placed at issue and fully developed by parties before the
Board, they should be addressed. However, nowhere does the
Federal Circuit remotely suggest that the Board undertake to
resolve an issue over which it lacks jurisdiction.
With regard to Schulze v. Green and Perkins v. Kwon, supra,
Sauer asserts:
[T]he Federal Circuit was telling the board to look

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beyond its narrow, parochial interest in minimizing its
own work load and to serve the public interest in
resolving issues within the board’s special expertise
in the forum specifically set up to decide such issues.
The board’s goal should not be to duck work whenever it
can; it should be to serve the public by deciding
genuine issues that needed to be decided in a just,
speedy, and inexpensive manner.
It could be argued (and no doubt there will be
those in the trial section [of the Board] who will
argue) that, if the board does not permit patentee-
interferents to file 37 CFR 1.635/1.642 motions to
bring into interferences patents owned by applicant-
interferents, the issues that would be presented by
such motions will never be “fully presented and
developed” and that, accordingly, the board will never
have to decide them. In response, Sauer submits that
that argument is unworthy of the board. Perhaps more
importantly, it is clearly contrary to the thrust of
the Federal Circuit’s repeated admonitions to the
board. To take that position would be, to use the
vernacular, “cruising for a bruising.” (Emphasis in
original.)
In our view, the Board is without jurisdiction under
35 U.S.C. § 135(a) to adjudicate a conflict between two issued
patents. That is so no matter how far the parties have developed
the issues, how much special expertise the members of the Board
may have in determining them, or how quickly and inexpensively
the Board may determine the issues as compared to a U.S. District
Court in an action under 35 U.S.C. § 291. Even if both parties
as well as the Board desire to have a conflict between patents
adjudicated by the Board, the Board is without power to do so.

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Congress imposed these limitations on our jurisdiction in
interferences.
Section 135(a) contains nothing to the effect that while the
Board may not adjudicate conflicts between issued patents, if one
of the patentees also happens to have a pending application drawn
to the same patentable invention, then the Board may declare and
conduct an interference involving an application versus patent
and a cancellation proceeding involving a patent versus a patent.
Such an exception makes little sense on its face and would seem
to owe its existence in Sauer’s argument to creative hindsight
analysis for salvaging a forum within the Patent and Trademark
Office for adjudicating conflicts between issued patents. We are
not persuaded that any such exception exists in 35 U.S.C.
§ 135(a), and we decline to open a back door to admit conflicts
between issued patents into the jurisdiction of the Patent and
Trademark Office when Congress has clearly not opened the front
door.
A conflict between two patents is no less a conflict between
two patents simply because another conflict exists between one of
the patents and a separate application. Under 35 U.S.C.
§ 135(a), the Board is without jurisdiction to adjudicate a
conflict between two patents and that is unchanged by having

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another conflict, one between an application and one of the
conflicting patents, in the same mixing bowl. This
interpretation of 35 U.S.C. § 135(a) is not contrary to any
decision of the Court of Appeals for the Federal Circuit which
Sauer has called to our attention.
Our interpretation is also consistent with the following
pronouncement in Notice of Final Rule, Patent Interference
Proceedings, 49 Fed. Reg. 48416, 48419 (December 12, 1984):
The definition of “interference” permits an
interference between one or more applications and one
o[r] more patents. Thus, these new rules follow the
policy of Wilson v. Yakel, 1876 Dec. Comm’r. Pat. 245
(Comm’r. Pat. 1876) and, to the extent inconsistent
therewith, do not follow the policy announced in Touval
v. Newcombe, 194 USPQ 509 (Comm’r. Pat. 1976).
However, in view of the statutory requirement for the
presence of at least one application in an
interference, if an applicant were to concede priority
or otherwise be terminated from an interference
involving only one application and more than one
patent, the interference would have to be terminated
for lack of subject matter jurisdiction unless one or
more of the patentees filed an application for reissue
which could be added to the interference under §
1.633(h).
In Wilson v. Yakel, 1876 Dec. Comm’r. Pat. 245 (Comm’r. Pat.
1876), a single application of Wilson interfered with a patent of
Yakel and also with a patent of Rogers. The Commissioner
sanctioned an interference proceeding involving all three
parties, which in effect represented a merger of two underlying

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interferences each involving the applicant Wilson and a patentee.
In this case between junior party Sauer and senior party Kanzaki,
only one of the multiple underlying interferences would be
between an applicant and a patentee. The other one(s) would be
between Kanzaki as a patentee and Sauer as a patentee. The 1984
Notice of Final Rulemaking made clear that even in the sanctioned
circumstance of Wilson v. Yakel, supra, if the applicant drops
out for whatever reason, the interference would have to be
terminated between the remaining patentees for lack of subject
matter jurisdiction.
For the foregoing reasons, Sauer’s Motions 6 and 7 cannot be
granted. The Board is without jurisdiction to declare or conduct
an interference to resolve a conflict between a Sauer patent and
a Kanzaki patent even if a Kanzaki application is drawn to the
same invention and would be included in the same proceeding.
2.
Alternatively, even if we have jurisdiction to conduct a
patent versus patent interference under the circumstances urged
by Sauer, i.e., when an application drawn to the same patentable
subject matter is included in the same proceeding, we exercise
our discretion under 37 CFR § 1.642 to not add any additional
patents to this particular interference.

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This interference, as declared, is solely between Sauer’s
Patent No. 5,513,717, and Kanzaki’s application 08/818,964. The
interference was necessary because the examiner could not issue a
patent to Kanzaki based on its application as long as the Sauer
patent was viable. On the addition of an application or patent
to a pending interference, 37 CFR § 1.642 states as follows:
During the pendency of an interference, if the
administrative patent judge becomes aware of an
application or a patent not involved in the
interference which claims the same patentable invention
as a count in the interference, the administrative
patent judge may add the application or patent to the
interference on such terms as may be fair to all
parties.
The operative word in the above-quoted section is “may” -- a
discretionary term. Sauer’s own motion acknowledges that
addition of patents and applications under 37 CFR § 1.642 is
“discretionary with the APJ.” See also Theeuwes v. Bogentoft,
2 USPQ2d 1378, 1379 (Comm’r Pats. 1986) (“37 CFR 1.642 generally
concerns actions to be taken at the discretion of the Examiner-
in-Chief [Administrative Patent Judge]”). Sauer additionally
cites 37 CFR § 1.601, which states:
This subpart shall be construed to secure the just,
speedy, and inexpensive determination of every
interference. (Emphasis added.)
According to Sauer, the addition of Kanzaki’s additional

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patents to this interference represents a more speedy and more
inexpensive determination of the parties’ possible overall
disputes involving the yet uninvolved Kanzaki patents as compared
to the prospect of a civil action in a U.S. District Court. But
37 CFR § 1.601 refers to a more speedy and inexpensive
determination of “every interference,” not of all conflicts
between the parties across multiple applications and patents
allegedly claiming the same invention.
The term “every interference” as is referred to in 37 CFR
§ 1.601 is directed to interferences already declared or about to
be declared under 35 U.S.C. § 135(a). Each such “interference”
does not necessarily involve all applications and patents having
a claim drawn to the same invention. Merely two cases, either an
application and a patent, or two applications, are sufficient to
support the declaration of an interference under 35 U.S.C.
§ 135(a). Not all applications and patents claiming the same
patentable invention may be known to the parties or to the
administrative patent judge, and even if all such cases are known
it may not be necessary to have all of them involved in an
interference proceeding, much less the same interference. For
instance, claims in additional applications of the non-prevailing
party in an interference, drawn to the same invention, may be

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rejected over the lost count, or alternatively, additional
interferences may be declared to settle those other conflicts.
If the meaning of “every interference” in 37 CFR § 1.601 is
ambiguous, which it is not, an agency’s interpretation of its own
regulations is entitled to substantial deference. E.g., Thomas
Jefferson University v. Shalala, 512 U.S. 504, 512 (1994) (“We
must give substantial deference to an agency’s interpretation of
its own regulations.”). The agency’s interpretation must be
given controlling weight unless it is plainly erroneous or
inconsistent with the regulation. Id. See also Princess
Cruises, Inc. v. United States, 201 F.3d 1352, 1359-60 (Fed. Cir.
2000)(“If the court must now accord Chevron deference to
Customs regulations interpreting statutes, we must accord at
least as much deference to that agency’s interpretation of its
own regulations.”); Torrington Co. v. United States, 156 F.3d
1361, 1364 (Fed. Cir. 1998) (“In determining that the two Route B
freight costs at issue in this case were selling expenses
properly the subject of a COS adjustment, Commerce was simply
interpreting its own regulations. We give substantial deference
to that interpretation.”).
Thus, assuming that the claims of Kanzaki’s Patent Nos.
5,950,500 and 5,473,964, are drawn to the same patentable

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invention as the count in this interference, we nonetheless
exercise our discretion not to add either patent to this on-going
interference, to keep this interference simple, as one solely
between junior party Sauer’s Patent No. 5,513,717 and senior
party Kanzaki’s application 08/818,964. This interference can be
conducted in a more speedy and inexpensive manner without the
addition of Kanzaki’s issued patents, and nothing makes the
determination of the interference between Sauer’s Patent No.
5,513,717 and Kanzaki’s application 08/818,964 unjust simply
because Kanzaki’s patents are not included. Nor does our
exercise of discretion not to add the Kanzaki patents leave Sauer
without a remedy given the availability of a civil action under
§ 291.

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In this interference, we are addressing the conflict between
Sauer’s Patent No. 5,513,717 and Kanzaki’s application
08/818,964, nothing more. The Sauer patent stands in the way of
issuance of the Kanzaki application. An interference has been
declared in order to provide an answer as to whether the Sauer
patent precludes the issuance of the Kanzaki application. The
proposed addition of Kanzaki patents into this interference does
not help in any way in resolving the bar which Sauer may provide
to the allowance of the Kanzaki application.
Moreover, if the uninvolved Kanzaki patents are added to
this interference and then the interference proceeding does not
continue in a way that bodes well for Kanzaki, nothing prevents
Kanzaki from abandoning its involved application at any time.
Then, the interference will have to be terminated with respect to
the parties’ involved patents. Such a development will have
resulted in a significant waste of Sauer’s as well as the Board’s
resources at the sole control of Kanzaki. That possibility gives
us pause. Even if Sauer does not mind spending its resources
that way, the Board must be mindful of the potential waste of its
scarce resources.
During oral argument, counsel for Sauer indicated that Sauer
has pending applications which can be the basis of a separate

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interference with Kanzaki’s Patent Nos. 5,950,500 and 5,473,964
on the same subject matter. If there is a Sauer application
pending and the examiner believes that it cannot be issued due to
the existence of certain Kanzaki patents, the possibility exists
that an additional interference may be declared to resolve the
issue between that application and the Kanzaki patents. Thus, in
addition to possible relief under § 291, it appears that Sauer
has other remedies in the agency for resolving priority regarding
the Kanzaki patents Sauer seeks to add to this proceeding.
3.
The Supreme Court has long ago affirmed the notion that
whether an interference will be declared is determined solely
upon the “opinion” of the Commissioner, and that if the
Commissioner is not of such an opinion and if two patents have
issued for the same invention, then the parties may resort to a
civil action between themselves to address the conflict. See
Ewing v. United States ex rel. The Fowler Car Co., 244 U.S. 1,
37 S. Ct. 494 (1917). In Ewing, the Court stated, 244 U.S. at 7-
8, 37 S. Ct. at 496:
Section 4904, Rev. Stat. Comp. Stat. 1913, § 9449
provides: “Whenever an application is made for a patent
which, in the opinion of the Commissioner, would
interfere with any pending application, or with an
unexpired patent, he shall give notice thereof to the

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applicants, or applicant and patentee, as the case may
be, and shall direct the primary examiner to proceed to
determine the question of priority of invention.
(Emphasis in original.)
Similar language is contained in 35 U.S.C. § 135(a) which, in
pertinent part, states:
Whenever an application is made for a patent
which, in the opinion of the Commissioner, would
interfere with any pending application, or with any
unexpired patent, an interference may be declared and
the Commissioner shall give notice of such declaration
to the applicants, or applicant and patentee, as the
case may be.
In Ewing, supra, the Commissioner declined to declare an
interference between two applications claiming the same
invention. Some of the same arguments advanced by party Sauer in
this case were addressed by the Supreme Court. For instance, the
Court stated, 37 S.Ct. at 497:
[P]etitioner [the junior party applicant desiring the
declaration of an interference] contends that “there is
a fundamental and basic right of opposition on the part
of any applicant, whether junior or senior, to prevent
the wrongful grant of a patent to his opponent.” . . .
There indeed seems to be a less personal right claimed,
-- the right of opposition in the interest of the
public, displacing the superintendency of the
Commissioner constituted by the law. It is to be
remembered that the law gives the Commissioner both
initial and final power. It is he who is to cause the
examination of an asserted invention or discovery and
to judge of its utility and importance; [footnote
omitted] it is he who is to judge (be of opinion)
whether an application will interfere with a pending
one; [footnote omitted] and it is he who, after an

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interference is declared and proceedings had, is the
final arbiter of its only controversy, priority of
invention. [Footnote omitted]
The contentions of petitioner put these powers out
of view, -- put out of view the fact that the so-called
“judgment of record” is, as the action of the
Commissioner may be said to be, but a matter of
administration. A suit in equity may follow and be
instituted by either party, and even in it nothing can
be determined but priority of invention. . . .
Such suit, therefore, is the judicial remedy the
law provides. Section 4904 (Comp. Stat. 1913, § 9449)
concerns and regulates the administration of the Patent
Office, and the utility of the discretion conferred
upon the Commissioner is demonstrated by his answer in
this case.
The situation is similar today. Discretion is conferred
upon the Director through 35 U.S.C. § 135(a), and either Sauer or
Kanzaki may initiate a civil action under 35 U.S.C. § 291 to
resolve the issue of two interfering patents.
4.
We exercise our discretion not to add Kanzaki’s Patents to
this interference, for still yet another reason, i.e., Sauer’s
Motions 6 and 7 suffer from a procedural defect. Note that
Paragraph 13 of the NOTICE DECLARING INTERFERENCE states in
rather plain terms (Paper 1, page 10):
Arguments presented in one paper shall not be
incorporated by reference to another paper.
A footnote associated with ¶ 13 explicitly states (Paper 1,

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page 10 n.7):
The purpose of this requirement is to minimize the
chance that an argument will be overlooked and to
maximize the efficiency of the decision-making process.
The entirety of Sauer’s substantive analysis in Motion 6
comparing the claimed subject matter of Kanzaki’s Patent No.
5,473,964 and the count of this interference is reproduced below:
That the subject matter defined by the claims in
the Okada [Kanzaki] ‘964 patent is not patentably
distinct from the subject matter defined by Louis’
claim 1 is demonstrated in section V of the first
37 CFR 1.639(b) declaration of Staffan I. Kaempe.
The entirety of Sauer’s substantive analysis in Motion 7
comparing the claimed subject mater of Kanzaki’s Patent No.
5,950,500 and the count of this interference is reproduced below:
That the subject matter defined by the claims in
the Okada [Kanzaki] ‘500 patent is not patentably
distinct from the subject matter defined by Louis’
claim 1 is demonstrated in section VI of the first
37 CFR 1.639(b) declaration of Staffan I. Kaempe.
Party Sauer, contrary to ¶ 13 of the NOTICE DECLARING
INTERFERENCE, has incorporated "arguments" from the first Staffan
Kaempe declaration (Ex 2018) into Sauer’s motions 6 and 7. Sauer
misperceives the role of motions and evidence. Declarations are
evidence. A motion is supposed to (1) lay out all relevant
facts, with reference to the evidence which supports the facts,
and (2) present an argument why the facts justify any relief

Interference No. 104,311
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
- 23 -
requested in the motion. In this case, the parties were also
given express notice in the NOTICE DECLARING INTERFERENCE (Paper
No. 1, Paragraph No. 13) that incorporation by reference is not
permitted. The following statement in DeSilva v. DiLeonardi,
181 F.3d 865, 867 (7th Cir. 1999), is especially fitting here:
Even when a litigant has unused space (as appellants
did not [footnote omitted]), incorporation is a
pointless imposition on the court’s time. A brief must
make all arguments accessible to the judges, rather
than ask them to play archeologist with the record.
Sauer’s Motions 6 and 7 do not themselves identify any
difference between the claims of Kanzaki’s Patent Nos. 5,950,500
and 5,473,964 and the count of this interference. Nor do they
themselves explain why the claims of Kanzaki’s Patent Nos.
5,950,500 and 5,473,964 would have been obvious from the subject
matter of the count in this interference. This procedural defect
in Sauer’s Motions 6 and 7 is an independent ground for our
exercising discretion not to add Kanzaki’s Patent Nos. 5,950,500
and 5,473,964 to this on-going interference.
C. Conclusion
For all of the foregoing reasons, party Sauer’s Motions 6
and 7 are herein dismissed.

Interference No. 104,311
Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.
- 24 -
BRUCE H. STONER, Jr., Chief)
Administrative Patent Judge)
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FRED E. McKELVEY, Senior )
Administrative Patent Judge)
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RICHARD E. SCHAFER )
Administrative Patent Judge)
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) BOARD OF PATENT
JAMESON LEE ) APPEALS
Administrative Patent Judge) AND
) INTERFERENCES
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RICHARD TORCZON )
Administrative Patent Judge)
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SALLY GARDNER-LANE )
Administrative Patent Judge)
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SALLY C. MEDLEY )
Administrative Patent Judge)