Winter v. Fujita

Parts I-A, III-A, III-B and IV of this opinion
are binding precedent of the Trial Section.
104,283 Paper 73
104,284 Paper 74
Filed by: Merits 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
_______________
ANDREAS WINTER, FRANK KUEBER, WALTER SPALECK,
HERBERT RIEPL, WOLFGANG A. HERRMANN,
VOLKER DOLLE and JUERGEN ROHRMANN,
Junior Party,
(Patent 5,455,365),
v.
TAKASHI FUJITA, TOSHIHIKO SUGANO and HIDESHI UCHINO,
Senior Party
(Application 08/678,686).
_______________
Patent Interference No. 104,283
_______________
Entered 16 November 1999
53 USPQ2d 1234
_______________
WALTER SPALECK, JUERGEN ROHRMANN and MARTIN ANTBERG,
Junior Party,
(Patent 5,329,033),
v.
TAKASHI FUJITA, TOSHIHIKO SUGANO and HIDESHI UCHINO,
Senior Party
(Application 08/678,686).
_______________
Patent Interference No. 104,284
_______________

Chief Judge Stoner joins in Parts I-A, III-A, III-B and IV of the	1
opinion, all of which are binding precedent of the Trial Section; Chief Judge
Stoner otherwise did not participate in deciding these interferences.
Judge Lee joins in Parts I-A, III-A, III-B and IV of the opinion, all	2
of which are binding precedent of the Trial Section; Judge Lee otherwise did
not participate in deciding these interferences.
- 2 -
MEMORANDUM IN SUPPORT OF FINAL JUDGMENTS
Before: STONER, Chief Administrative Patent Judge,	1
McKELVEY, Senior Administrative Patent Judge, and SCHAFER,
LEE and TORCZON, Administrative Patent Judges.	2
McKELVEY, Senior Administrative Patent Judge.
Interference 104,283 and Interference 104,284 are before a
merits panel for entry of final decisions. Since the issues
raised in both interferences are similar, the interferences are
consolidated for oral argument and entry of final decisions.
Oral argument was held on 29 September 1999 before Judges
McKelvey, Schafer and Torczon. Chief Judge Stoner and Judge Lee
have participated in, and join, in Parts I-A, III-A, III-B and IV
of this opinion.
Ashley I. Pezzner, Esq. (argued-in-part), and Thomas M.
Meshbesher, Esq. (argued-in-part), appeared on behalf of Winter
and Spaleck.
Charles L. Gholz, Esq., and Alton D. Rollins, Esq. (argued),
appeared on behalf of Fujita.
Oral argument was transcribed by a court reporter. A copy
of a transcript of oral argument has been made part of the record
in each interference.

A list of abbreviations used in this opinion appears in an Appendix	3
to the opinion. The first use of an abbreviation is in bold.
- 3 -
Findings of fact
The records in Interference 104,283 and Interference 104,284
support, by a preponderance of the evidence, the following
findings, as well as those set out in the opinion portion of this
memorandum.
Junior party--Interference 104,283
1. The junior party is Andreas Winter, Frank Kueber,
Walter Spaleck, Herbert Riepl, Wolfgang A. Herrmann, Volker Dolle
and Juergen Rohrmann (Winter).3
2. Winter is involved on the basis of its U.S. Patent
5,455,365, granted 3 October 1995, based on application
08/101,408, filed 3 August 1993.
3. The real party in interest is Targor GmbH
(283 Paper 10).
Junior party--Interference 104,284
4. The junior party in Interference 104,284 is Walter
Spaleck, Juergen Rohrmann and Martin Antberg (Spaleck).
5. Spaleck is involved in Interference 104,284 on the
basis of its U.S. Patent 5,329,033, granted 12 July 1994, based
on application 08/142,512, filed 25 October 1993.
6. For the purpose of priority with respect to
Count 1 of Interference 104,284, Spaleck has been accorded the

- 4 -
benefit of U.S. application 07/934,573, filed 24 August 1994, now
U.S. Patent 5,278,264, granted 11 January 1994.
7. The real party in interest is Targor GmbH
(284 Paper 9).
Senior party--both interferences
8. The senior party in both interferences is Takashi
Fujita, Toshihiko Sugano and Hideshi Uchino (Fujita).
9. Fujita is involved in both interferences on the
basis of its application 08/678,686, filed 11 July 1996.
10. For the purpose of priority with respect to
Count 1 of Interference 104,283 and Count 1 of Interference
104,284, Fujita has been accorded the benefit of:
a. U.S. application 07/933,215, filed 20 August
1992, and
b. Japanese patent application 208213/1991,
filed 20 August 1991 (283 Paper 25, page 2;
284 Paper 23, page 2).
11. The real party in interest is Mitsubishi Chemical
Corporation (283 Paper 6).
The count and claims of the parties
corresponding to the count--Interference 104,283
12. The sole count in Interference 104,283 is Count 1,
which reads (283 Paper 1, page 42):

- 5 -
The metallocene compound according [to] claim 1 of
the Winter patent
or
the catalyst according to claim 8 of the Fujita
application wherein the methyl or phenyl of the R2
(which is selected from the group consisting of
methyl-1,3-butadienylene or phenyl-1,3-butadienylene)
is attached to the 5-position of any indene ring.
13. The claims of the parties are:
Winter 1-6
Fujita 8-19
14. The claims of the parties which correspond to
Count 1 are:
Winter 1-6
Fujita 8-14 and 16
15. The claims of the parties which do not correspond
to Count 1 are:
Winter None
Fujita 15 and 17-19
The count and claims of the parties
corresponding to the count of Interference 104,284
16. The sole count in Interference 104,284 is Count 1,
which reads (284 Paper 1, page 42):
The metallocene compound according [to] claim 1 of
the Spaleck patent
or

- 6 -
the catalyst according to claim 8 of the Fujita
application wherein the methyl or phenyl of the R2
(which is selected from the group consisting of
methyl-1,3-butadienylene or phenyl-1,3-butadienylene)
is attached to the 4-position of any indene ring.
17. The claims of the parties are:
Spaleck 1-4
Fujita 8-19
18. The claims of the parties which correspond to
Count 1 of Interference 104,284 are:
Spaleck 1-4
Fujita 8-13, 15 and 17-18
19. The claims of the parties which do not correspond
to Count 1 of Interference 104,284 are:
Spaleck None
Fujita 14, 16 and 19
Metallocenes
20. Metallocenes are compounds which can be used as a
component of a catalyst in a process for polymerizing olefins.
21. An example of a metallocene is one having the
following formula:

Si	R9 R10
R3
R4
R5
R3
R5
R4
M
R2
R1
1
2
3	4
5
6 7
1'
3'
4'
5'
6' 7'
2'
- 7 -
where M is
a metal, such as zirconium (Zr). The R's can be various
organic moieties, such as methyl ( ) CH ).	3
22. The numbers in the formula identify the positions
on the ring structures. The metallocene shown has an R in both	4
the 5 and 5' positions. As will become apparent, the position at
which organic moieties are attached to the ring structure is not
without significance.
Subject matter claimed by Winter
in Interference 104,283
23. Winter claims metallocene compounds having the
formula:

- 8 -
24. Important in Interference 104,283 is the position
on the ring and definition of R and R , as well as R .	4 5 3
25. According to Winter claim 1, the broadest Winter
claim designated as corresponding to Count 1 of Interference
104,283, R , R and R are defined as follows:	3 4 5
R , R and R are identical or different and	3 4 5
R and R and/or R are other than hydrogen and	3 4 5
are a C -C -alkyl group, a C -C -aryl group,	1 20 6 20
a C -C -alkenyl group, a C -C -arylalkyl group,	2 10 7 40
a C -C -alkylaryl group or a C -C -arylalkenyl	7 40 8 40
group, these radicals optionally being
halogenated, [and]
R may alternatively be hydrogen.	5

When the R s are hydrogen and the R s are not hydrogen.	4 5 4
When R s are hydrogen and R s are not hydrogen.	5 4 5
When none of the R s and R s are hydrogen.	6 4 5
- 9 -
26. In its Preliminary Motion 2, Winter states that
(283 Paper 27, page 5):
Winter's claimed metallocenes are directed to a
2,5-substituted indenyl ligand, a 2,6-substituted	4
indenyl ligand or a 2,5,6-substituted indenyl	5
ligand metallocene.	6
27. According to Winter, the metallocene and
a cocatalyst together can be used as a catalyst to polymerize
olefins (col. 1, lines 30-55).
28. The cocatalyst can be an aluminoxane (col. 5,
lines 33-50).
29. According to Winter (col. 6, lines 34-50):
It is possible to preactivate the metallocene
by means of an aluminoxane *** before use in the
polymerization reaction.
*****
The preactivation of the transition-metal
compound is carried out in solution.
*****
The concentration of the aluminoxane in the
solution is in the region of about 1% by weight to
the saturation limits, preferably from 5 to 30% by
weight, in each case based on the total solution.
The metallocene can be employed in the same

- 10 -
concentration, but is preferably employed in an
amount of from 10 to 1 mol per mole of	-4
aluminoxane. The preactivation time is from 5
minutes to 60 hours, preferably from 5 to 60
minutes. The reaction temperature is from -78EC.
to 100EC., preferably from 0E to 70EC.
30. Further according to Winter (col. 7, lines 5-10):
When the above mentioned cocatalysts are
used, the actual (active) polymerization catalyst
comprises the product of the reaction of the
metallocene and one of said compounds. This
reaction product is therefore prepared first,
preferably outside the polymerization reactor, in
a separate step using a suitable solvent.
Subject matter claimed by Spaleck
in Interference 104,284
31. Spaleck claims metallocene compounds having the
formula:

- 11 -
32. Important in Interference 104,284 is the position
on the ring and definition of R and R . According to Spaleck	3 4
claim 1, the broadest Spaleck claim designated as corresponding
to Count 1 of Interference 104,284, R and R are defined as	3 4
follows:
R and R are identical or different and are a	3 4
halogen atom, a C -C -alkyl group, which can be	1 10
halogenated, a C -C -aryl group or an )	 NR ,	6 10 210
)	
SR , )	 OSiR , )	 SiR or )	 PR radical, in which	10 10 10 10
3 3 2
R is a halogen atom, a C -C -alkyl group or a C -	10 1 10 6
C -aryl group.	10
33. Further, according to Spaleck, the metallocene and
a cocatalyst can be used to polymerize olefins (col. 2,
lines 23-50).
34. The cocatalyst can be an aluminoxane (col. 8,
lines 22-41).
35. Spaleck says (col. 8, line 67 through col. 9,
line 50):
It is possible for the metallocene to be
preactivated with an aluminoxane *** before use in
the polymerization reaction.
*****
The preactivation of the transition metal
compound is carried out in solution.
*****

- 12 -
The concentration of the aluminoxane in the
solution is in the range from about 1% by weight
to the saturation limit, preferably from 5 to 30%
by weight, in each case based on the total
solution. The metallocene can be employed in the
same concentration, but it is preferably employed
in an amount of 10 -1 mol per mole of	-4
aluminoxane. The preactivation time is 5 minutes
to 60 hours, preferably 5 to 60 minutes.
*****
If the above mentioned cocatalysts are used,
the actual (active) polymerization catalyst
comprises the reaction product of the metallocene
and one of the compounds mentioned. This reaction
product is therefore preferably prepared first
outside the polymerization reactor in a separate
step using a suitable solvent ***.
Difference between the Winter and Spaleck
metallocenes
36. A significant difference between the metallocenes
claimed by Winter and those claimed by Spaleck is the position of
moieties on the ring structure. In the case of Winter, R is	4
located at the 5- and 5'-positions. Spaleck, on the other hand,
requires that R and R be at the 4- and 4'-positions.	3 4
37. The Winter activated metallocenes are said to
produce polyolefins which "preferably have a molecular weight Mw
>80,000, in particular >100,000 g/mol, a melting point of <145EC.

- 13 -
and a molecular weight dispersity M /M #3.5, in particular #2.8"	w n
(col. 8, lines 10-12).
38. The Spaleck patent states (col. 10, lines 41-51):
The process according to the invention is
distinguished by the fact that the metallocene
catalyst systems described produce polymers having
a narrow molecular weight distribution and coarse
particle morphology as well as variable molecular
weight and stereotacticity in the temperature
range between 30E and 80EC., which is of
industrial interest, but in particular in the
range between 60E and 80EC. The particular
polymer molecular weight and stereotacticity
desired is established by choosing suitable
substituents in the 2- and 4-positions of the
ligand system of the metallocene [i.e., the ring
portion of the metallocene].
Subject matter claimed by Fujita
in both interferences
39. The Fujita application involved in both
interferences contains claims 8-19. Claim 8 is the sole
independent claim and reads as follows:
A catalyst useful for the polymerization of
olefins, which catalyst comprises a transition metal
compound having formula (I)

- 14 -
wherein:
M represents a transition metal selected from the
group consisting of titanium, zirconium and hafnium;
two R s may be the same or different, and each	1
represents a monovalent hydrocarbyl group having 1 to 4
carbon atoms, or a monovalent hydrocarbyl group having
1 to 4 carbon atoms and containing silicon;
R is selected from the group consisting of	2
methyl-1,3-butadienylene and phenyl-1,3-butadienylene;
R is selected from the group consisting of a	3
methylene group, an ethylene group and a silylene group
which may or may not have a substituent of a lower
alkyl group; and
X and Y independently represent a member selected
from the group consisting of chlorine, lower alkyl and
a lower alkyl substituted silyl group,
provided that the two five-membered cyclic ligands
each have the substituents R and R are asymmetric	1 2

Perhaps the "provided" paragraph should read: "provided that the	7
two five-membered cyclic ligands each have the substituents R and R are	1 2
asymmetric about a plane containing M when viewed from their relative position
in terms of the group R .	3
- 15 -
about a plane containing M when viewed from their
relative position in terms of the group R .	3 7
40. Fujita claims 14-19 call for specific
metallocenes.
41. Fujita claims 14 and 16 call for a methyl group at
the 5- and 5'-positions. Accordingly, these claims were
designated to correspond to the count in Interference 104,283,
but not to the count in Interference 104,284.
42. Fujita claims 15, 17 and 18 call for a methyl or
phenyl group in the 4- and 4'-positions. Accordingly, these
claims were designated to correspond to the count in Interference
104,284, but not the count in Interference 104,283.
43. Fujita claim 19 calls for a methyl group in both
the 4-, 4'-, 7- and 7'-positions. The examiner determined that
Fujita claim 19 should be designated as not corresponding to the
count in either interference. The examiner's determination is
not contested by Winter, Spaleck or Fujita.
44. Fujita claims 8-13 mention a metallocene which is
"generic" in the sense that a substituent may appear in either
the 4- and 4'- or 5- and 5'-positions. Accordingly, these claims
were designated as corresponding to the count in both
interferences.

- 16 -
45. According to the specification of the involved
Fujita application, the invention "comprises the following
component (A) and component (B)" (page 2, lines 22-23).
46. Component (A) is a metallocene (page 2, line 24 et
seq.).
47. Component (B) is an aluminoxane (page 3, line 25
et seq.).
48. According to Fujita (page 13, lines 5-9):
The catalyst according to the present
invention can be prepared by bringing the above-
described component (A) and component (B) into
contact with each other in the presence or absence
of monomers to be polymerized, inside or outside
an autoclave.
49. Further according to Fujita (page 13,
lines 29-33):
When the above catalyst system is used for
the polymerization of an olefin, the components
(A) and (B) may be introduced into a reaction
vessel either separately or after being brought
into contact with each other.
50. Fujita, acting as its own lexicographer, states in
its specification (page 4, lines 16-20):
The expression "comprising component (A) and
component (B)" herein means that it is possible to
use a third component other than components (A)

It would appear that Fujita could have used the language "consisting	8
essentially" in place of defining "comprising" in a manner contrary to its
normal meaning. Compare In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ
893, 896 (CCPA 1963) (the presence of "consisting essentially of" in a
composition claim leaves the scope of the claim open only to the inclusion of
unspecified ingredients which do not materially affect the basic and novel
characteristics of the composition); Ex parte Davis, 80 USPQ 448, 450 (Bd.
App. 1948) (definition of comprising, consisting and consisting essentially).
See also PPG Industries, Inc. v. Guardian Industries Corp., 156 F.3d 1351,
1354, 48 USPQ2d 1351, 1353-1354 (Fed. Cir. 1998).
- 17 -
and (B) as long as it does not impair the effects
of the present invention.8
Preliminary and other motions
before the merits panel
51. In their respective preliminary statements, the
parties do not allege a conception or actual reduction to
practice prior to their filing dates.
52. Winter and Spaleck have filed several preliminary
motions.
53. Fujita did not file any preliminary motion.
54. Accordingly, each party is restricted to its
filing date subject to an effort by Winter (Preliminary Motion 2)
and Spaleck (Preliminary Motion 2) to be accorded the benefit of
the filing date of earlier U.S. and German patent application.
55. Hence, a decision on preliminary motions resolves
the interferences (283 Paper 25, page 3; 284 Paper 23, page 3;
Tr 7:1-13).
56. The following preliminary motions and other
motions are before the merits panel:

The serial number (08/101,408) and filing date (August 3, 1993)	9
mentioned on the first page of WEx 1001 are those for the application which
matured into the patent sought to be reissued and not the reissue application.
- 18 -
(1) Winter Preliminary Motion 1 for judgment
based on no interference-in-fact between Winter and Fujita
(283 Paper 26). 37 CFR § 1.633(b).
(2) Spaleck Preliminary Motion 1 for judgment
based on no interference-in-fact between Spaleck and Fujita
(284 Paper 25). 37 CFR § 1.633(b).
(3) Winter Preliminary Motion 2 to be accorded
benefit of two prior U.S. patent applications and a German patent
application filed 12 November 1990 (283 Paper 27). 37 CFR
§ 1.633(f).
(4) Spaleck Preliminary Motion 2 to be accorded
benefit of two prior U.S. patent applications and a German patent
application filed 12 November 1990 (284 Paper 26). 37 CFR
§ 1.633(f).
(5) Winter Preliminary Motion 3 (283 Paper 28) to
add to Interference 104,283, application 09/252,719, filed
19 February 1999 (Winter 719) (WEx 1001), to reissue involved	9
Winter U.S. Patent 5,455,365. 37 CFR § 1.633(h).
(6) Spaleck Preliminary Motion 3 (284 Paper 27)
to add to Interference 104,284, application 09/253,832, filed

The serial number (08/142,512) and filing date (October 25, 1993)	10
mentioned on the first page of SEx 1001 are those for the application which
matured into the patent sought to be reissued and not the reissue application.
- 19 -
19 February 1999 (Spaleck 832) (SEx 1001), to reissue involved	10
Spaleck U.S. Patent 5,329,033. 37 CFR § 1.633(h).
(7) Winter Rule 635 motion (283 Paper 56) for
leave to file a belated Winter Preliminary Motion 4 to question
the enablement of the Fujita application.
(8) Spaleck Rule 635 motion (284 Paper 57)
for leave to file a belated preliminary motion to question the
enablement of the Fujita application.
(9) Fujita has filed a Rule 635 motion (283 Paper
50) to strike Winter Reply 1 (283 Paper 44). Winter Reply 1 was
filed in response to Fujita's opposition to Winter Preliminary
Motion 1.
(10) Fujita has filed a Rule 635 motion (284 Paper
51) to strike a Spaleck Reply 1 (284 Paper 44). Spaleck Reply 1
was filed in response to Fujita's opposition to Spaleck
Preliminary Motion 1.
(11) Fujita has filed FUJITA MOTION 2, a Rule 635
motion (283 Paper 71; 284 Paper 72) seeking leave to file a
declaration of Dr. Tobin Marks (FEx 2010).

- 20 -
Interference-in-fact
57. There is no claim in the involved Winter
patent which is identical to a claim in the involved Fujita
application.
58. There is no claim in the involved Spaleck
patent which is identical to a claim in the involved Fujita
application.
59. The parties agree that Winter claim 1 is directed
to compounds (283 Paper 26, page 3; 283 Paper 32, page 2).
60. The parties agree that Spaleck claim 1 is directed
to compounds (284 Paper 25, page 3; 284 Paper 2).
61. The parties do not agree that Fujita claim 8--the
sole independent Fujita claim--is directed to a compound.
62. In fact, Winter and Spaleck disagree with Fujita
as to the scope and meaning of Fujita claim 8.
63. The parties agree that metallocene compounds have
uses other than polymerization catalysts (283 Paper 26, page 3;
283 Paper 32, page 2; 284 Paper 25, page 3; 284 Paper 31,
page 2).
64. Winter and Spaleck maintain that examiners have
made requirements for restriction (35 U.S.C. § 121) between what
they call "polymerization catalyst claims" and "metallocene
claims" (283 Paper 26, page 3; 284 Paper 25, page 3).

- 21 -
Winter and Spaleck preliminary motions
for benefit of earlier U.S. and German applications
65. Winter and Spaleck have filed preliminary motions
to be accorded the benefit for the purpose of priority (37 CFR
§ 1.633(f)) of:
a. U.S. application 08/101,408,
filed 3 August 1993.
b. U.S. application 07/789,361,
filed 8 November 1991,
now U.S. Patent 5,276,208,
granted 4 January 1994.
c. German patent application P 4 035 884.4,
filed 12 November 1990.
66. Fujita does not oppose benefit with respect
to application 08/101,408 (283 Paper 34, page 1; 284 Paper 33,
page 1).
67. At oral argument, counsel for Fujita agreed that
if Winter or Spaleck are entitled to benefit of application
07/789,361, they would also be entitled to benefit of the German
patent application (283 Paper 61, page 3; 284 Paper 62, page 3;
Tr 50:20 to 51:9).
68. Accordingly, the Winter and Spaleck preliminary
motions for benefit will be resolved on the basis of whether
Winter and Spaleck respectively are entitled to benefit for the
purpose of priority of application 07/789,361, which is now
U.S. Patent 5,276,208 (Patent 208) (WEx 1002; SEx 1002).

- 22 -
69. Patent 208 describes metallocenes (col. 1, lines 7
and 35-50).
70. Patent 208 states (col. 1, lines 7-11):
The present invention relates to novel
metallocenes which contain ligands [i.e., the ring
structures] of 2-substituted indenyl derivatives
and can very advantageously be used as catalysts
in the preparation of polyolefins of high melting
point (high isotacticity).
71. Patent 208 describes metallocenes having Formula I
(col. 1, lines 40-55).
72. According to Patent 208, the metallocenes of
Formula I can be made from compounds having Formula II (col. 4,
lines 37-55):
wherein:
R is identified as being identical or different and	10
is as defined for R , R and R (col. 3, lines 63-64).	11 12 13

- 23 -
73. R , R and R can be a wide variety of moieties	11 12 13
(col. 2, lines 25-33).
74. The metallocenes of Formula I do not fall within
the scope of the count of Interference 104,283 or Interference
104,284; the 6-member rings of the metallocenes of Formula I are
not aromatic.
75. On the other hand, the 6-member rings of the
compound of Formula II are aromatic as is apparent from the
circle inside the ring.
76. According to Patent 208 (col. 3, line 64 through
col. 4, line 13):
The radicals R are preferably hydrogen atoms or	10
C ) C )	 , preferably C ) C ) , alkyl groups.	1 10 1 4
The particularly preferred metallocenes are
thus those in which *** R is hydrogen; in	10
particular the compounds I listed in the working
examples.
77. There is no description in Patent 208 of a
metallocene having a non-hydrogen moiety R group specifically	10
in the 4-, 4'-, 5- or 5'-positions.
78. Rather, according to Patent 208, the compounds of
Formula (II) have four R groups some of which may be alkyl	10
groups (e.g., methyl groups).

- 24 -
79. Patent 208 does not emphasize or describe any
advantage of having an alkyl group in the 4-, 4'-, 5- or
5'-positions.
80. Rather, Patent 208 emphasizes a requirement that
the R and R moieties in 2- and 2'-positions be something other	5 6
than hydrogen (col. 2, lines 5-7; see also col. 1, line 67 et
seq.), such as alkyl, particularly methyl (col. 3, lines 3-6).
81. At oral argument, Mr. Meshbesher, counsel for
Winter and Spaleck, emphasized the importance of a moiety
position on a metallocene ring as follows (Tr 34:9-12 and
39:13-21):
Well, each metallocene almost has to be considered on its
merits because the positioning of groups of the 6-member
ring of the metallocene affects its performance.
and
There is a difference in behavior -- well, they all have in
common a substituant in the 2 position of the indenyl, but
there's another 6-member ring and there it matters where --
let's say your substituent is a methyl group, it matters
whether you put the methyl group at the 4, 5, 6 or 7
position, and it matters whether there are two methyl groups
and where they happen to be located.
82. Mr. Meshbesher's observations are factually
correct and are supported by the record.

- 25 -
83. Patent 208 does not contain a written description
of the subject matter claimed in the involved Winter patent.
84. Patent 208 does not contain a written description
of the subject matter of Count 1 of Interference 104,283.
85. Patent 208 does not contain a written description
of a species within the scope of the claims of the involved
Winter patent.
86. Patent 208 does not contain a written description
of a species within the scope of the count of Interference
104,283.
87. Patent 208 does not contain a written description
of the subject matter claimed in the involved Spaleck patent.
88. Patent 208 does not contain a written description
of the subject matter of Count 1 of Interference 104,284.
89. Patent 208 does not contain a written description
of a species within the scope of the claims of the involved
Spaleck patent.
90. Patent 208 does not contain a written description
of a species within the scope of the count of Interference
104,284.
Addition of Winter 719 reissue application
91. Winter 719 reissue application contains
claims 1-12.

- 26 -
92. Winters seeks to have claims 1-6 designated as
corresponding to the count of Interference 104,283.
93. Claims 1-6 are identical to claims 1-6 of Winter's
involved patent.
94. Fujita opposes Winter Preliminary Motion 3 on the
ground that (283 Paper 36, page 3):
Winter seeks to amend the interference by adding to its
reissue application claims to be designated as not
corresponding to the count.
95. Accordingly, Fujita maintains that the "motion
should be dismissed" (id.).
96. Alternatively, Fujita maintains that Winter 719
claims 7-12 should be designated as corresponding to Count 1 of
Interference 104,283.
Addition of Spaleck 832 reissue application
97. Spaleck 832 reissue application contains
claims 1-10.
98. Spaleck seeks to have claims 1-4 designated as
corresponding to the count of Interference 104,284.
99. Claims 1-4 are identical to claims 1-4 of
Spaleck's involved patent.
100. Fujita opposes Spaleck Preliminary Motion 3 on the
ground that (284 Paper 35, page 3):

- 27 -
Spaleck seeks to amend the interference by adding to its
reissue application claims to be designated as not
corresponding to the count.
101. Accordingly, Fujita maintains that the "motion
should be dismissed" (id.).
102. Alternatively, Fujita maintains that Spaleck 832
claims 5-10 should be designated as corresponding to Count 1 of
Interference 104,284.
Background as to how issue of designation
of new Winter and Spaleck reissue claims arose
103. Consistent with the practice of the Trial Section,
prior to setting the times for taking action during the
preliminary motion phase of the interference, a conference call
took place with counsel (see, e.g,, 283 Paper 25, pages 1-2).
104. During the conference call, Winter and Spaleck
indicated that they would file a reissue application and would
move to add their respective reissue applications to the
respective interferences.
105. As a result of the conference call, the following
observation was made by the administrative patent judge
designated to handle the interferences (283 Paper 25, page 2):
With respect to the preliminary motion to add a reissue
application, it was indicated by Winter that it would be
Winter's position that not all claims in the reissue
application would be designated as corresponding to the

- 28 -
count. In the event the preliminary motion is filed and
Fujita believes that claims in the reissue application
should be designated as corresponding to the count, Fujita
should oppose the preliminary motion and request that
additional reissue application claims be designated as
corresponding to the count.
106. In due course, Winter filed Winter Preliminary
Motion 3 and Spaleck filed Spaleck Preliminary Motion 3 to add
their respective reissue applications.
107. As indicated earlier, Fujita responded by arguing
that the preliminary motions should be dismissed.
108. Alternatively, Fujita argued that the preliminary
motions should be granted only if all new claims in both reissue
applications are designated as corresponding to a count.
109. Winter and Spaleck replied.
110. During the preliminary motion phase of the
interference, Winter and Spaleck made an assumption that Fujita
had the burden of proof to the extent Fujita sought to have new
claims in the reissue applications designated as corresponding to
the count. Given the state of the record, the assumption was not
unreasonable.
111. Fujita made an assumption, and maintains to this
day, that Winter and Spaleck had the burden of proof. Given the
state of the record, Fujita's assumption is likewise not
unreasonable.

- 29 -
112. Following oral argument on preliminary motions,
Fujita was given an opportunity to respond to the Winter and
Spaleck replies, principally in case it turned out that Fujita
had the burden of proof.
113. The Fujita response was accompanied by FUJITA
MOTION 2, a Rule 635 motion for leave to file a declaration of
Dr. Tobin Marks (283 Paper 71; 284 Paper 72).
114. The declaration is said to be necessary to
establish that the non-original patent claims in the Winter and
Spaleck reissue applications are directed to the same invention
as the count of the interference into which the reissue is sought
to be added.
Opinion
Part I.
Interference-in-fact
A.
Winter maintains that there is no interference-in-fact
between Winter and Fujita.
Spaleck maintains that there is no interference-in-fact
between Spaleck and Fujita.
An "interference-in-fact" is a term of art in interference
practice. The rules define an "interference-in-fact" as follows
(37 CFR § 1.601(j)):

- 30 -
An interference-in-fact exists when at least one claim
of a party that is designated to correspond to a count
and at least one claim of an opponent that is
designated to correspond to the count define the same
patentable invention.
The rules define "same patentable invention" as follows (37 CFR
§ 1.601(n)):
Invention "A" is the same patentable invention as an
invention "B" when invention "A" is the same as (35
U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention "B" assuming invention "B" is prior art with
respect to invention "A". Invention "A" is a separate
patentable invention with respect to invention "B" when
invention "A" is new (35 U.S.C. 102) and non-obvious
(35 U.S.C. 103) in view of invention "B" assuming
invention "B" is prior art with respect to invention
"A".
Subparts (j) and (n) of Rule 601 implement holdings of the
former Court of Customs and Patent Appeals. See, e.g., Aelony v.
Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977) (an interference-in-
fact held to exist between a claim to a method of using
cyclopentadiene and a claim to a method using butadiene,
isoprene, dimethylbutadiene, piperylene, anthracene, perylene,
furan or sorbic acid; the claims were held to be directed to the
same patentable invention even though they did not overlap in
scope). See also Notice of Final Rule, Patent Interference

See Notice of Final Rule, supra at 48440 ("Two comments questioned	11
the nature of the judgment when a motion under § 1.633(b) is granted. Section
1.633(b) authorizes the filing of a [preliminary] motion for judgment on the
ground that there is no interference-in-fact. If a [preliminary] motion under
§ 1.633(b) is granted, the judgment would provide that each party is entitled
to a patent containing that party's claims corresponding to the count.").
- 31 -
Cases, 49 Fed. Reg. 48416 (Dec. 12, 1984) (see Examples 16 at
48421 and Example 20 at 48424).
An issue of whether an interference-in-fact exists is placed
before the board by the filing of a preliminary motion under
37 CFR § 1.633(b). If the preliminary motion is granted, both
parties would be entitled to a patent containing their respective
claims initially designated as corresponding to the count because
those claims would be determined to be directed to separate
patentable inventions.11
Resolution of an interference-in-fact issue involves a
two-way patentability analysis. The claimed invention of Party A
is presumed to be prior art vis-a-vis Party B and vice versa.
The claimed invention of Party A must anticipate or render
obvious the claimed invention of Party B and the claimed
invention of Party B must anticipate or render obvious the
claimed invention of Party A. When the two-way analysis is
applied, then regardless of who ultimately prevails on the issue
of priority, the Patent and Trademark Office (PTO) assures itself
that it will not issue two patents to the same patentable
invention.

- 32 -
B.
Winter and Spaleck maintain that their respective patent
claims and the claims of Fujita are directed to "separate
patentable invention[s]" within the meaning of 37 CFR § 1.601(n).
We understand the argument to be the following:
1. Winter and Spaleck claim metallocene compounds.
2. Metallocene compounds have utility other than as a
catalyst for making polyolefins.
3. Fujita claim 8--the only independent Fujita
claim--is directed to a catalyst system in which a
metallocene is used as an ingredient for making an
activated "catalyst system."
4. According to Winter and Spaleck a "catalyst
system" involves a reaction product of the
metallocene and an activator, alternatively, the
metallocene and activator are somehow bound one
with the other in some chemical fashion.
5. Examiners in the Patent and Trademark Office
routinely have required restriction (35 U.S.C.
§ 121) between metallocenes per se and catalyst
systems made from metallocenes.
6. A metallocene and a "catalyst system" made from a
metallocene are separate patentable inventions and

- 33 -
therefore there is no interference-in-fact between
Winter/Spaleck and Fujita.
The party filing a preliminary motion for judgment alleging
no interference-in-fact has a burden of proving its case by a
preponderance of the evidence. See 37 CFR § 1.637(a), first
sentence, and compare Bruning v. Hirose, 161 F.3d 681, 684, 48
USPQ2d 1934, 1937 (Fed. Cir. 1998) (burden of proof on the issue
of patentability of the claims of a patent in an interference
where applications are copending is by a preponderance of the
evidence).
C.
At oral argument, it became apparent that the parties do
not agree on the scope of, or the meaning of terms in, Fujita
claim 8. The language of Fujita claim 8 which appears to create
the disagreement is that which reads "A catalyst useful for the
polymerization of olefins which catalyst comprises ***." Fujita
maintains that Fujita claim 8 covers a metallocene per se.
Winter and Spaleck maintain that (1) Fujita claim 8 is limited to
a "catalyst system," (2) does not cover a metallocene per se and
(3) accordingly, there is no interference-in-fact.
Construction of the meaning of words in a patent claim is an
issue of law to be resolved based on the facts of each case.
Markman v. Westview Instruments, Inc., 517 U.S. 370, 391, 116
S.Ct. 1384, 1396 (1996) (interpretation of the word "inventory"

- 34 -
[in a patent claim] in this case is an issue for the judge, not
the jury ***."); Ethicon Endo-Surgery, Inc. v. U.S. Surgical
Corp., 93 F.3d 1572, 1577, 40 USPQ2d 1019, 1022 (Fed. Cir. 1996)
(significance to be given a limitation in a patent claim is a
question of law which is resolved based on particular facts).
D.
Fujita claim 8 could have been presented simply as "A
transition metal compound having formula (I):" followed by
Formula (I). It was not. Rather, it contains additional
language which reads "A catalyst useful for the polymerization of
olefins which catalyst comprises ***." What is the significance,
if any, of the additional language?
As a general proposition, we believe that it is appropriate,
where possible, to assign some meaning to each word of a claim.
Thus, like the words of a statute, each word in a claim should be
given meaning if possible.
The record reveals that Winter, Spaleck and Fujita describe
metallocene compounds which when activated (generally with an
aluminoxane) can be used to polymerize olefins. While it may be
a matter of debate as to whether the Winter, Spaleck and/or
Fujita metallocenes will function as a catalyst per se (see,
e.g., Tr 13:18-22), there is little doubt that the metallocenes
are, at least preferably, activated with a cocatalyst. Catalysis
is not a precise science as evidenced by the different results

We wish to emphasize that the Winter and Spaleck patents are not	12
admissible in evidence to prove the truth of statements made therein. See
NOTICE DECLARING INTERFERENCE, ¶ 41. Each patent is admissible, however, to
prove what is described therein and perhaps may be used as an admission by a
party opponent. Each patent describes results which are said to be obtained
when the metallocenes described therein are used to polymerize olefins.
See, e.g., In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991)	13
(given relative incomplete understanding in biotechnological field involved
and the lack of a reasonable correlation between the narrow disclosure in
Vaeck's specification and the broad scope of protection sought in the claims,
PTO did not err in entering rejection based on 35 U.S.C. § 112, first
paragraph, for lack of enablement); In re Fisher, 427 F.2d 833, 839, 166 USPQ
18, 24 (CCPA 1970) (the scope of enablement obviously varies inversely with
the degree of unpredictability of the factors involved).
- 35 -
which the Winter and Spaleck patents say are obtained depending
on where substituents are placed on the ring structure. It is	12
possible that within the scope of the metallocenes of Formula (I)
of Fujita claim 8, there may be some metallocene species, even
when activated, which will not function for the utility described
by Fujita. Fujita avoids any side-show issue of whether its
enabling disclosure is commensurate in scope with the breadth	13
of Fujita claim 8 by limiting the metallocenes of Formula (I) to
those which, when used in the manner described in the Fujita
specification, will be "useful for the polymerization of olefins
***."
In the context of the Fujita specification, the activated
catalyst used to make polyolefins is some combination of a
metallocene and an activator. Hence, Fujita's use of "which
catalyst comprises" means that the catalyst must be a metallocene
within the scope of Formula (I). In the final analysis, we agree

See also Tr 66:6-16: "MR. ROLLINS: So if you have a compound which	14
is a metallocene within the scope of the claim and it is capable of acting
together with an activator or without an activator, either, to polymerize
olefins, it's within the scope of the claim. It's rather that simple.
JUDGE McKELVEY: Actually you meant to say if you have a metallocene within
the scope of the formula --. MR. ROLLINS: Of the formula, that's correct."
- 36 -
with the following statement made at oral argument by Mr.
Rollins, counsel for Fujita (Tr 59:5-14):
The Fujita claim has at most three limitations. One
limitation is on the structure of the metallocene
compound, and I think that's quite straightforward.
Another limitation or both of the other limitations
appear in the preamble. One limitation is that nothing
is within the scope of the claim unless it's a
catalyst, and whether you consider a part of the same
limitation as the catalyst or a different limitation,
it has to be a catalyst useful for the polymerization
of olefins.14
Based on our construction of Fujita claim 8, as outlined
above, we hold, as a matter of law, that Fujita claim 8 covers
a metallocene having Formula (I), but only those metallocenes
within the scope of Formula (I) which can be used along with an
activator to polymerize olefins. It further follows that Fujita
dependent claims 14 and 16 cover specific metallocenes which fall
within the scope of Winter claim 1. It still further follows
that Fujita dependent claims 15, 17 and 18 cover specific
metallocenes which fall within the scope of Spaleck claim 1.
E.

Winter has not moved to have any of its claims 1-6 designated as not	15
corresponding to the count of Interference 104,283; hence, all Winter claims
stand or fall together with respect to the interference-in-fact issue.
- 37 -
The subject matter of Fujita claims 14 and 16 anticipates
(35 U.S.C. § 102) the subject matter of Winter claim 1, if one
presumes--as we must in an interference-in-fact analysis--that
the subject of Fujita claims 14 and 16 is prior art vis-a-vis
Winter. Likewise, the subject matter of Winter claim 6
anticipates (35 U.S.C. § 102) the subject matter of Fujita claim
8 if one presumes that the subject matter of Winter claim 6 is
prior art vis-a-vis Fujita. Hence, there is an interference-in-
fact between the Winter claims and the Fujita claims designated
as corresponding to the count of Interference 104,283.15
F.
The subject matter of Fujita claims 15, 17 and 18
anticipates (35 U.S.C. § 102) the subject matter of Spaleck
claim 1, if one presumes that the subject of Fujita claims 15, 17
and 18 is prior art vis-a-vis Spaleck. Likewise, the subject
matter of Spaleck claim 4 anticipates (35 U.S.C. § 102) the
subject matter of Fujita claim 8 if one presumes that the subject
matter of Speleck claim 4 is prior art vis-a-vis Fujita. For
example, the compound "rac-dimethylsilylbis(1-(2-methyl-4-ethyl-
indenyl)zirconium dichloride" reads on Fujita claim 8 when:
(1) M is zirconium;

Spaleck has not moved to have any of its claims 1-4 designated as not	16
corresponding to the count of Interference 104,284; hence, all Spaleck claims
stand or fall together with respect to the interference-in-fact issue. In
particular, we note that with respect to the no interference-in-fact issue,
Spaleck does not maintain that Spaleck claim 4 is entitled to any separate
consideration, although later with respect to Preliminary Motion 3, Spaleck
maintains that certain of (but not all) of the racemic metallocenes within the
scope of Spaleck claim 4 are separately patentable from the count of
Interference 104,284.
- 38 -
(2) R is methyl-1,3-butadienylene (where the methyl	2
is substituted at the 5- and 5'-positions)
(3) R is a silylene group substituted with two methyl	3
groups (i.e., lower alkyl groups);
(4) X and Y are chloro groups.
Hence, there is an interference-in-fact between the Spaleck
claims and the Fujita claims designated as corresponding to the
count of Interference 104,284.16
G.
Notwithstanding our construction of the scope of Fujita
claim 8, we believe that Winter and Spaleck have failed to
sustain their burden of establishing no interference-in-fact even
if Fujita claim 8 is construed to be limited to a metallocene
"catalyst system" activated with an aluminoxane.
Winter, Spaleck and Fujita ultimately use their respective
metallocenes in the same manner. The metallocene and an
activator, e.g., an aluminoxane, are mixed and then placed in a
polymerization reactor or are mixed in the polymerization reactor
along with the olefin monomer to be polymerized.

- 39 -
Given the similar manner in which all say their metallocenes
are used, if one presumes that the Winter metallocene is prior
art vis-a-vis Fujita, then it manifestly would have been obvious
(35 U.S.C. § 103) to mix the Winter metallocene with an
aluminoxane to make the "catalyst system" which Winter says is
covered by Fujita claim 8. Likewise, if we presume that Fujita
is prior art vis-a-vis Winter, then if one skilled in the art
would have appreciated which metallocene is used to make the
activated catalysts of Fujita claim 14. That metallocene
anticipates (35 U.S.C. § 102) Winter claim 1.
If one presumes that the Spaleck metallocene is prior art
vis-a-vis Fujita, then it manifestly would have been obvious
(35 U.S.C. § 103) to mix the Spaleck metallocene with an
aluminoxane to make the "catalyst system" which Spaleck says is
covered by Fujita claim 8. Likewise, if we presume that Fujita
is prior art vis-a-vis Spaleck, then if one skilled in the art
would have appreciated which metallocene is used to make the
activated catalysts of Fujita claim 15. That metallocene
anticipates (35 U.S.C. § 102) Winter claim 1.
H.
Winter has failed to sustain its burden of demonstrating
that there is no interference-in-fact between Winter and Fujita
in Interference 104,283. Accordingly, Winter Preliminary
Motion 1 is denied.

- 40 -
Spaleck has failed to sustain its burden of demonstrating
that there is no interference-in-fact between Spaleck and Fujita
in Interference 104,284. Accordingly, Spaleck Preliminary
Motion 1 is denied.
Part II.
Winter and Spaleck request for benefit
A.
Winter and Spaleck, in their respective Preliminary
Motion 2, request to be accorded the benefit for the purpose of
priority of Patent 208. Fujita opposes their requests.
Resolution of the issue of whether Winter and/or Spaleck should
be accorded benefit turns on whether Patent 208 sufficiently
describes the subject matter of the count of Interference 104,283
and/or the count of Interference 104,284.
B.
Winter and Spaleck can succeed if they can demonstrate that
Patent 208 describes a species within the scope of the relevant
count. Hunt v. Treppschuh, 523 F.2d 1386, 1389, 187 USPQ 426,
429 (CCPA 1975) (an application need only disclose a single
enabled embodiment within the scope of the count to constitute a

A rationale which supports the holding in Hunt v. Treppschuh is that	17
if a party describes a single species within the scope of the count, the
opposing party is not entitled to a patent covering subject which is not
patentably distinct from the disclosed species.
- 41 -
constructive reduction to practice of the invention of the
count).17
We have found, however, that Patent 208 does not describe a
species within the count of Interference 104,283 or the count of
Interference 104,284. Accordingly, Winter and Spaleck are not
entitled to be accorded benefit for the purpose of priority based
on the principles of Hunt v. Treppschuh.
C.
The fact that Patent 208 does not describe a species within
the scope of the count of Interference 104,283 or the count of
Interference 104,284 is not fatal to the Winter and Spaleck
effort to be accorded benefit of Patent 208. In other words, we
would not foreclose a possibility that in an appropriate case a
benefit application might contain a sufficient description of the
subject matter of the count or a party's claims corresponding to
the count to justify according benefit notwithstanding the
absence of a description of a species within the scope of the
count (Tr 76:20 to 77:5).
In Interference 104,283, the count requires that there be a
substituent on the 5- and/or 6-position of each ring structure
(i.e., the R or R of Winter and the methyl or phenyl of the R	4 5 2

- 42 -
of Fujita is attached to the 5-position of the indene ring). The
question thus becomes whether Patent 208 contains a sufficient
description of the requirement for a substituent in the 5- and/or
6-position.
D.
Our appellate reviewing court made the following observation
in Eiselstein v. Frank, 52 F.3d 1035, 1040, 34 USPQ2d 1467, 1470
(Fed. Cir. 1995) (citations omitted):
"Satisfaction of the description requirement insures
that subject matter presented in the form of a claim
subsequent to the filing date of the application was
sufficiently disclosed at the time of filing so that
the prima facie date of invention can fairly be held to
be the filing date of the application." In order to
determine whether a prior application meets the
"written description" requirement with respect to
later-filed claims, the prior application need not
describe the claimed subject matter in exactly the same
terms as used in the claims; it must simply indicate to
persons skilled in the art that as of the earlier date
the applicant had invented what is now claimed. The
test is whether the disclosure of the application
relied upon reasonably conveys to a person skilled in
the art that the inventor had possession of the claimed
subject matter at the time of the earlier filing date.
"Precisely how close the original description must come
to comply with the description requirement of § 112
must be determined on a case-by-case basis."

- 43 -
Our appellate reviewing court also observed in Fujikawa v.
Wattanasin, 93 F.3d 1559, 1570-71, 39 USPQ2d 1895, 1904-05 (Fed.
Cir. 1996) (citations omitted):
As the Board recognized, however, ipsis verbis
disclosure is not necessary to satisfy the written
description requirement of section 112. Instead, the
disclosure need only reasonably convey to persons
skilled in the art that the inventor had possession of
the subject matter in question. In other words, the
question is whether Wattanasin's "application provides
adequate direction which reasonably [would lead]
persons skilled in the art" to the sub-genus of the
proposed count.
Many years ago our predecessor court graphically
articulated this standard by analogizing a genus and
its constituent species to a forest and its trees. As
the court explained:
It is an old custom in the woods to mark trails by
making blaze marks on the trees. It is no help in
finding a trail . . . to be confronted simply by a
large number of unmarked trees. Appellants are
pointing to trees. We are looking for blaze marks
which single out particular trees. We see none.
*****
Were we to extend Ruschig's metaphor to this case,
we would say that it is easy to bypass a tree in the
forest, even one that lies close to the trail, unless
the point at which one must leave the trail to find the
tree is well marked. Wattanasin's preferred
embodiments do blaze a trail through the forest; one

- 44 -
that runs close by Fujikawa's proposed tree. His
application, however, does not direct one to the
proposed tree in particular, and does not teach the
point at which one should leave the trail to find it.
E.
We do not find the necessary blaze marks in Patent 208.
Patent 208 describes a genus which embraces compounds having
substituents in the 5-, 5'-, 6- and 6'-positions. However,
Patent 208 does not specifically describe any particular compound
with a substituent in the 5- and/or 6-positions. Patent 208 says
that the preferred metallocenes are those wherein R is hydrogen	10
(col. 3, line 67 through col. 4, line 13). All of the Patent 208
examples appear to describe metallocenes wherein all the R s are	10
hydrogen.
Winter and Spaleck acknowledge that the position of the
substituent at the 5- and/or 6-position is not without
significance. See Finding 81. Metallocenes with substituents at
the 5- and 6-position, on this record, are patentably distinct
from metallocenes with substituents at the 4-position.
Otherwise, there would have been only one interference declared
between Winter and Spaleck versus Fujita. The parties have
treated the counts in the two interferences as patentably
distinct. Both Winter (Findings 25-26) and Spaleck (Findings 32
and 38) emphasize the importance of the position where

- 45 -
substituents are attached. Accordingly, Patent 208 does not
contain the necessary description to accord Winter and Spaleck
its benefit for the purpose of priority in these interference.
Cf. Bigham v. Godtfredsen, 857 F.2d 1415, 1417-18, 8 USPQ2d 1266,
1268-69 (Fed. Cir. 1988).
Winter has failed to sustain its burden of demonstrating
that it is entitled to be accorded the benefit for the purpose of
priority of Patent 208 in Interference 104,283. Accordingly,
Winter Preliminary Motion 2 is denied. Because Winter will not
be accorded benefit and there will be no priority testimony, a
judgment will be entered in favor of Fujita on the issue of
priority.
Spaleck has failed to sustain its burden of demonstrating
that it is entitled to be accorded the benefit for the purpose of
priority of Patent 208 in Interference 104,284. Accordingly,
Spaleck Preliminary Motion 2 is denied. Because Spaleck will not
be accorded benefit and there will be no priority testimony, a
judgment will be entered in favor of Fujita on the issue of
priority.
III.
Preliminary motions to add reissue applications
A.
The rules authorize a patentee involved as a party in an
interference to file a preliminary motion to add a reissue

With respect to the meaning of the language "[s]how the patentability	18
of all claims *** which correspond to *** [the] count," see Notice of the
Chief Administrative Patent Judge, "Interference Practice--Interference Rules
Which Require a Party to "Show the Patentability" of a Claim," 1217 Off. Gaz.
Pat. & Tm. Office 17 (Dec. 1, 1998).
- 46 -
application to an interference. 37 CFR § 1.633(h). The
preliminary motion must comply with the requirements of 37 CFR
§ 1.637(h). Rule 637(h) provides (emphasis added):
§ 1.637 Content of motions.
(h) A preliminary motion to add an application
for reissue under § 1.633(h) shall:
(1) Identify the application for reissue.
(2) Certify that a complete copy of the file
of the application for reissue has been
served on all opponents.
(3) Show the patentability of all claims in,
or proposed to be added to, the
application for reissue which correspond
to each count and apply the terms of the
claims to the disclosure of the
application for reissue; when	[18]
necessary a moving applicant for reissue
shall file with the motion an amendment
adding any proposed claim to the
application for reissue.
(4) Be accompanied by a motion under
§ 1.633(f) requesting the benefit of the
filing date of any earlier filed
application, if benefit is desired.
The parties disagree as to whether Winter and Spaleck have
complied with Rule 637(h)(3). Specifically, Fujita maintains

- 47 -
that Winter and Spaleck did not comply with Rule 637(h)(3). See
Findings 94-95, 100-101 and 107.
There is no rule which authorizes the filing of a
preliminary motion to add a claim to an "ordinary" application
(as distinguished from a reissue application) and have the claim
designated as not corresponding to the count. Likewise, there is
no rule which authorizes the filing of a preliminary motion to
add a claim to a reissue application and have the claim
designated as not corresponding to the count. Hence, there is a
long-standing practice of not permitting an applicant in an
ordinary application to file a preliminary motion to add claims
to its reissue application for the purpose of having those claims
designated as not corresponding to the count. See, e.g.,
L'Esperance v. Nishimoto, 18 USPQ2d 1534, 1537 (Bd. Pat. App. &
Int. 1991). The board's practice is currently implemented by
(1) dismissing preliminary motions seeking to add claims and to
have those claims designated as not corresponding to the count
and (2) not "entering" any amendment submitted with the
preliminary motion (37 CFR § 1.615(a)). The rationale which
supports the policy of not permitting an applicant to add a claim
and have the claim designated as not corresponding to a count
applies with equal force to claims in a reissue sought to be

If a party could file a preliminary motion to have a claim, not	19
previously considered by an examiner, designated as not corresponding to the
count, then to grant the preliminary motion, the board in the first instance
would have to determine that the claim is not directed to the same patentable
invention as the count. The board would be in the business of rendering
essentially advisory opinions which should not be binding on the examiner.
The examiner may, and is more likely to, know of additional art, not
considered by the board, which might establish that the claim is directed to
the same patentable invention as the count.
A patentee filing a reissue and asking that the reissue be added to	20
the interference may have to mention an original patent claim because that
original patent claim may have been designated as not corresponding to the
count when the interference was initially declared.
- 48 -
added to the interference. Moreover, there is no express	19
provision in Rule 637(h) which permits a patentee to discuss any
non-original patent claim which the patentee believes should be
designated as not corresponding to the count. The provision of	20
Rule 637(h)(3) which states "when necessary a moving applicant
for reissue shall file with the motion an amendment adding any
proposed claim to the application for reissue" would be subject
to the limitations of Rule 633(c) and Rule 637(c), neither of
which permit a preliminary motion to add a claim to be designated
as not corresponding to the count. In fact, Rule 637(h)(3)
refers only to claims which correspond to the count. Hence,
Rule 637(h) should be construed to not authorize the addition of
reissue applications to an interference when the reissue
application contains non-original patent claims which the reissue
applicant does not seek to have designated as corresponding to
the count. A reissue applicant should not be able through the

We recognize that Winter and Spaleck filed their respective reissue	21
applications to claim priority. See State of Israel v. Brenner, 273 F.Supp.
714, 155 USPQ 486 (D.D.C. 1967), aff'd, 400 F.2d 789, 158 USPQ 584 (D.C. Cir.
1968) (reissue may be filed to perfect claim for foreign priority not
perfected during prosecution of application which matured into patent sought
to be reissued). The claim for priority was necessary to support their effort
to obtain benefit of the 208 Patent. Since Winter and Spaleck failed on the
merits (i.e, Winter and Spaleck Preliminary Motions 2 have been denied), they
do not need their reissue in these interferences to perfect their claim for
benefit. Had we ruled otherwise on the benefit issue, we would have granted
the motion to add the reissue applications contingent on Winter and Spaleck
promptly cancelling Winter 719 claims 7-12 and Spaleck 832 claims 5-10.
Nor do we feel that Winter and/or Spaleck necessarily had a full	22
opportunity to develop on the merits the issue of whether Winter 719 claims
7-12 and Spaleck 832 claims 5-10 should correspond to the count. The question
of who had the burden of proof in these interferences has never been clear and
is contested by the parties. See Findings 110 and 111. If we had authority
under the rules to reach the merits issue, we would be inclined to permit
Winter and Spaleck to respond to Fujita's latest submission with cross-
examination or declarations of their own witnesses or both.
- 49 -
back door to do what every other applicant cannot do through the
front door.
For the reasons given, we agree with Fujita that the Winter
and Spaleck preliminary motions to add reissue applications
should be dismissed because both Winter and Spaleck seek to add
reissue applications with claims which they do not feel should be
designated as corresponding to the count. According, Winter
Preliminary Motion 3 and Spaleck Preliminary Motion 3 are
dismissed. Since both preliminary motions are being dismissed,	21
it is not necessary to reach, or express any views on the merits
of, the issue of whether Winter 719 claims 7-12 and Spaleck 832
claims 5-10 cover subject matter which is the same patentable
invention as the counts in the respective interferences.22

- 50 -
B.
In light of the discussion in Part III-A, supra, we today
announce the following practice. In the future we will dismiss
any preliminary motion under Rule 633(h) which seeks to add a
reissue application to an interference when the reissue
application contains non-original patent claims which the reissue
applicant does not seek to have designated as corresponding to a
count. Our newly announced practice does not preclude a patentee
in an interference from filing a reissue application. If the
reissue application contains new claims which the reissue
applicant does not seek to have designated as corresponding to
the count, the reissue application will not be added to the
interference.
C.
After the interference is over, the Winter and Spaleck
reissue applications will come before the examiner for ex parte
examination. One issue the examiner will have to consider is
whether Winter 719 claims 7-12 and Spaleck 832 claims 5-10 are
patentable. In particular, the examiner may have to determine
whether the claims should be rejected as being unpatentable over
the lost count and/or on the basis of the rationale of In re
Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992).
The arguments presented by Fujita and the declaration of
Dr. Tobin Marks are material to the patentability within the

A third-party declaration is admissible in ex parte examination.	23
In re Reuter, 670 F.2d 1015, 210 USPQ 249 (CCPA 1981) (third party affidavit
admissible in ex parte PTO proceeding. We voice no opinion on the weight
which should be given to Fujita's arguments and evidence with respect to the
patentability of Winter 719 claims 7-12 and/or Spaleck 832 claims 5-10.
We also note the following additional defects in the Winter and	24
Spaleck replies. The replies presume the truth of statements made in the
specification of the Winter and Spaleck patents despite the fact that the
patents are not admissible to prove the truth of statements made therein.
See NOTICE DECLARING INTERFERENCE, ¶ 41. Copies of the Winter and Spaleck
patents were not made exhibits. See NOTICE DECLARING INTERFERENCE, ¶ 37.
- 51 -
meaning of 37 CFR § 1.56. Accordingly, we recommend that Winter
and Spaleck supply copies to the examiner in the Winter and
Spaleck reissue files of all arguments made by Fujita and all
evidence supplied by Fujita, including the declaration of
Dr. Marks.23
IV.
Fujita Rule 635 motion to strike
Fujita has moved to strike Winter Reply 1 and Spaleck
Reply 1. Much of what Fujita has to say about new arguments in
the Winter and Spaleck replies has merit. For example, Fujita
correctly notes that the replies do not follow the format
required in the NOTICE DECLARING INTERFERENCE. See ¶ 26(c)(4) at
page 21. Failure to follow the format renders it difficult to	24
determine whether a reply raises new issues.
In our opinion, Winter Preliminary Motion 1 and/or Spaleck
Preliminary Motion 1 do not make out a prima facie case that
there is no interference-in-fact. Based on the content of the
preliminary motions and the oral argument, we have little, if

See n.12, supra.	25
http//:www.uspto.gov/web/offices/dcom/bpai/its/104258.pdf.	26
- 52 -
any, doubt that Winter or Spaleck failed to sustain their burden
of establishing no interference-in-fact. Hence, it was generally
unnecessary for us to consider either Fujita's oppositions or the
Winter or Spaleck replies.
However, we would be less than candid if we did not
acknowledge having read Fujita's oppositions. A cursory review
of Winter Reply 1 and Spaleck Reply 1 will show that numerous new
arguments were made by Winter and Spaleck in their replies.
We have found it unnecessary to consider the replies with
one exception. Fujita in its oppositions and Winter and Spaleck
in their replies have discussed the scope of, and the meaning of
language in, Fujita claim 8. We have considered the Winter and
Spaleck replies only to the extent that they take issue with
Fujita's opposition with respect to the meaning of Fujita claim 8
and only to the extent that the replies rely on admissible
evidence. Otherwise, we have not found it necessary to	25
consider Winter Reply 1 or Spaleck Reply 1.
We continue to be concerned with inappropriate replies being
filed in interference cases. See Part 2-a. of Nau v. Ohuchida,26
which states:
It has long been the perception of most, if not
all, of the administrative patent judges of this board

- 53 -
that counsel routinely raise new arguments and present
new evidence with replies. Presentation of new
arguments and evidence with replies raise several
concerns which the Trial Section had hoped to eliminate
through requirements in the NOTICE DECLARING
INTERFERENCE.
One concern is whether a good faith effort was
made in the first instance in filing a motion,
including a preliminary motion. To this end, it is the
practice of the Trial Section to consider a motion. If
it finds that the motion fails to make out a prima
facie case for relief, the motion may be denied without
consideration of any opposition or reply. The Trial
Section does not deem it fair to an opponent when a
party "gets its licks in" for the first time at the
reply stage after the opponent can no longer submit
evidence and/or argument. In short, the Trial Section
hopes to eliminate the unfair tactical advantage which
can be gained through improper replies.
Another concern is that improper replies make the
decision-making process difficult. It is time-
consuming to read a motion only to discover that the
issue to be resolved is joined at the reply stage.
Hence, new arguments and new evidence at the reply
stage generally result in inefficient administration of
justice inefficient, all contrary to the philosophy set
out in 37 CFR § 1.601.
The Trial Section's concern with replies is not a
new development. At the time the "new" interferences
rules were being considered, it was proposed to allow
replies only for certain motions. Notice of Proposed
Rulemaking, Patent Interference Proceedings, 49 Fed.

- 54 -
Reg. 3766, 3776 (col. 3), 3793 (col. 2) (Jan. 30,
1984). As a result of comments received following the
notice of proposed rulemaking, it was decided to permit
replies in all instances. However, the following
observation can be found in the Notice of Final Rule
(emphasis added):
Another comment made at the hearing
suggested that a reply to an opposition to a
motion should be permitted as a matter of
course. Upon consideration of the comment,
it has been decided to authorize the filing
of replies to opposition to all motions.
Presently, replies are permitted as a matter
of course only for oppositions to motions
under 37 CFR 1.231 [1984]. Section 1.638(b),
as changed, would permit the reply in every
instance. The PTO over the years has
received complaints concerning the inability
of a party to file replies. The change being
made in § 1.638(b) will be reviewed sometime
in the future to determine whether
authorizing replies is helpful to the Board
and/or whether undue delay in resolving
interference occurs because replies are
filed. Moreover, the PTO will make a
judgment on whether "new issues" are being
raised as a matter of course in replies. It
can thus be seen that the change in
authorizing replies may be considered
experimental and could be changed in the
future if found to be counter-productive or
inconsistent with the objective of resolving

- 55 -
interferences in a relatively prompt manner
(emphasis added).
Notice of Final Rule, Patent Interference Proceedings,
49 Fed. Reg. 48416, 48442 (col. 3) (Dec. 12, 1984).
The Trial Section has gone out of its way to eliminate
the raising of new arguments in replies. See Paragraph
31 of the NOTICE DECLARING INTERFERENCE. If the
interference bars wishes to retain its option of being
able to file replies, then it should make every effort
to avoid raising improper new arguments and presenting
improper new evidence with replies. Quite frankly, if
the efforts of the Trial Section are not successful, we
see the next step as a proposal to amend the rules to
permit a reply only with leave of an administrative
patent judge.
The Trial Section feels that one more warning is in order to
all concerned that we will strictly enforce the reply brief
practice as of the date this opinion is published on the PTO Web
Page or elsewhere. Whatever may have been the expectation prior
to that publication, we feel we are left with little choice.
Moreover, any reply which does not use the format required by
¶ 26(c), including ¶ 26(c)(4), of the NOTICE DECLARING
INTERFERENCE will be returned. We take a final warning step in
what we perceive to be the same spirit in which the Federal
Circuit recently has taken steps to curb the raising of arguments
before that court which are inconsistent with arguments made to a
district court. See Key Pharmaceuticals v. Hercon Laboratories

- 56 -
Corp., 161 F.3d 709, 715-16, 48 USPQ2d 1911, 1916 (Fed. Cir.
1998) and Hockerson-Halberstadt v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999), which states:
As a preliminary matter, this court decides that
HHI has not waived the claim construction it advances
on appeal. The recent case of Key Pharmaceuticals v.
Hercon Laboratories Corp., 161 F.3d 709, 48 USPQ2d
(BNA) 1911 (Fed. Cir. 1998) presented a similar issue.
In Key, Hercon challenged on appeal the very claim
construction it convinced the trial court to adopt.
Finding Hercon's position "highly questionable," this
court noted:
Ordinarily, doctrines of estoppel, waiver, invited
error, or the like would prohibit a party from
asserting as "error" a position that it had
advocated at the trial.
Id. at 715. However, because this court had not issued
an opinion publicly condemning this behavior and
because Key did not object, the Key court exercised an
"abundance of fairness" and revisited the claim
construction issue. See id. at 715-16.
The parties completed briefing in the case at bar
on November 19, 1998, about a week before this court's
November 25, 1998 decision in Key. Thus, the present
parties, as in Key, did not have the benefit of an
opinion of this court noting the impropriety of
switching claim constructions on appeal. Accordingly,
this court again exercises an abundance of fairness and
reviews the correctness of the district court's claim
construction.

- 57 -
We deem it appropriate to exercise the same abundance of fairness
in this case that the Federal Circuit exercised in Key and
Hockerson-Halberstadt. We do not intend to be so charitable once
this opinion appears on the PTO Web Page or is otherwise
published.
For the reasons given, we exercise our discretion by
declining to strike Winter Reply 1 and Spaleck Reply 1. Fujita's
Rule 635 Motion to strike is denied.
V.
The Winter and Spaleck Rule 635 motions
to leave to file belated preliminary motions
Winter and Spaleck seek to file belated preliminary motions
to challenge the patentability of Fujita's claims under the first
and second paragraphs of 35 U.S.C. § 112. Winter and Spaleck
argue that there is good cause for not having earlier filed the
preliminary motions. We disagree and therefore the Winter and
Spaleck Rule 635 motions are denied.
Winter and Spaleck are said to have been surprised by a
Fujita construction given Fujita claim 8 in a paper filed by
Fujita on 25 May 1999 (283 Paper 50; 284 Paper 51). By virtue of
being surprised, Winter and Spaleck say they could not have
earlier filed a preliminary motion attacking the patentability of
Fujita claim 8 under 35 U.S.C. § 112. But, it is absolutely
plain on this record that as early as the filing of Winter Reply

- 58 -
1 and Spaleck Reply 1 on 17 May 1999 in response to Fujita
oppositions filed 16 April 1999 that there was a disagreement as
to the meaning of Fujita claim 8. Moreover, both the examiner
(FEx 2004, page 3--"the instant [Fujita] claims read on compounds
as well as the catalyst composition") and the NOTICE DECLARING
INTERFERENCE, page 43 (Fujita claim 16--which depends from Fujita
claim 8--is directed to a catalyst which is a compound) construed
Fujita claim 8 as being directed to a compound. It appears that
Winter and Spaleck have never agreed with the examiner's
construction of Fujita claim 8 or the construction placed on the
Fujita claims in the NOTICE DECLARING INTERFERENCE.
The issues Winter and Spaleck seek to raise in a belated
preliminary motion are manifestly afterthoughts which come too
late in this interference.
VI.
Fujita Rule 635 motion 2 to file declaration
Fujita has moved to file and have considered on the merits a
declaration of Dr. Tobin Marks. See Findings 56(11) and 113.
Inasmuch as we have dismissed Winter Preliminary Motion 3 and
Spaleck Preliminary Motion 3, as requested by Fujita, we do not
reach the remaining grounds of Fujita for opposing the
preliminary motions. Accordingly, there is no need to consider
the Marks declaration. Fujita's Rule 635 Motion 2 is therefore
dismissed.

- 59 -
VII.
Priority of invention
Fujita is entitled to an earlier benefit date. There will
be no priority testimony since the parties rely on their filing
dates in the respective preliminary statements. Accordingly,
Fujita is entitled to a judgment on the issue of priority in its
favor in both interferences.
A separate judgment will be entered in each interference.
______________________________
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )

- 60 -
Abbreviations used in opinion
283 Paper xx Paper number of paper in the file of
Interference 104,283, Winter v. Fujita
284 Paper xx Paper number of paper in the file of
Interference 104,284, Spaleck v. Fujita
FEx Fujita exhibit
Fujita The inventive entity named in application
08/678,686, filed 11 July 1996 which is
involved in both Interference 104,283 and
Interference 104,284
Patent 208 U.S. Patent 5,276,208, issued 4 January 1994
PTO Patent and Trademark Office
SEx Spaleck exhibit
Spaleck The inventive entity named in U.S. Patent
5,329,033 which is involved in Interference
104,284
Spaleck 832 Spaleck application 09/253,832, filed
19 February 1999 seeking to reissue Spaleck
U.S. Patent 5,329,033 which is involved in
Interference 104,284
Tr x:y-z Page x, lines y to z of the transcript of
oral argument on 29 September 1999
WEx Winter exhibit
Winter The inventive entity named in U.S. Patent
5,455,365 which is involved in Interference
104,283
Winter 719 Winter application 09/252,719, filed
19 February 1999 seeking to reissue Winter
U.S. Patent 5,455,365 which is involved in
Interference 104,283

The opinion in support of the decision being
entered today is binding precedent of the Trial Section
104,283 Paper 82
104,284 Paper 83
Filed by: Merits 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
_______________
ANDREAS WINTER, FRANK KUEBER, WALTER SPALECK,
HERBERT RIEPL, WOLFGANG A. HERRMANN,
VOLKER DOLLE and JUERGEN ROHRMANN,
Junior Party,
(Patent 5,455,365),
v.
TAKASHI FUJITA, TOSHIHIKO SUGANO and HIDESHI UCHINO,
Senior Party
(Application 08/678,686).
_______________
Patent Interference No. 104,283
_______________
Entered 5 January 2000
53 USPQ2d 1478
_______________
WALTER SPALECK, JUERGEN ROHRMANN and MARTIN ANTBERG,
Junior Party,
(Patent 5,329,033),
v.
TAKASHI FUJITA, TOSHIHIKO SUGANO and HIDESHI UCHINO,
Senior Party
(Application 08/678,686).
_______________
Patent Interference No. 104,284
_______________

In its request for reconsideration Fujita ceases to refer to Fujita as "Fujita" and instead	27
refers to Fujita's as "Mitsubishi Chemical Company (hereinafter referred to as 'MCC')". Fujita has
assigned its interest to MCC. We will not compound any confusion created by the change and instead
will continue to refer to the senior party as "Fujita".
Abbreviations in this opinion are the same as those listed on page 57 of the MEMORANDUM IN	28
SUPPORT OF FINAL JUDGMENTS.
- 2 -
MEMORANDUM OPINION and ORDER
(denying request for reconsideration filed by Fujita)
Before: STONER, Chief Administrative Patent Judge,
McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
Fujita requests reconsideration of Part III-A and	27
Part III-B of our MEMORANDUM IN SUPPORT OF FINAL JUDGMENTS
entered 16 November 1999 (283 Paper 78; 284 Paper 79). Winter	28
v. Fujita, __ USPQ2d ____ (Bd. Pat. App. & Int. 1999).
A. Introduction
Fujita's request for reconsideration is somewhat curious.
There came a time in the interferences when Winter and
Spaleck filed preliminary motions under 37 CFR § 1.633(h)
[Rule 633(h)] seeking to add Winter 719 reissue application to
Interference 104,283 and Spaleck 832 reissue application to
Interference 104,284 (Finding 116). Fujita opposed, arguing that
Winter and Spaleck were seeking "to amend the interference by
adding to its reissue application claims to be designated as not
corresponding to the count" (emphasis added) (Findings 94

The word "dismiss" as applied to preliminary and other motions filed in an interference is a	29
term of art. In deciding any motion, a panel or APJ may grant or deny the motion. A motion which is
granted or denied has been treated on the merits. Another possibility is to "dismiss" a motion. In
dismissing a motion, the panel or APJ does not reach the merits. There are numerous reasons why a
motion may be dismissed, including but not limited to, (1) failure to timely file the motion,
(2) failure to comply with procedural requirement of the rules or the NOTICE DECLARING INTERFERENCE
and (3) filing a motion not authorized by the rules.
- 3 -
and 100). Fujita accordingly urged that each preliminary "motion
should be dismissed" (Findings 95 and 101). Contingent on our	29
not dismissing the Winter and Spaleck preliminary motions, Fujita
alternatively opposed on the merits. According to Fujita, Winter
719 claims 7-12 should be designated as corresponding to the
count of Interference 104,283 and Spaleck 832 claims 6-10 should
be designated as corresponding to the count of Interference
104,284.
The merits panel dismissed the preliminary motions just
as Fujita had requested. We found that neither preliminary
motion, as filed, met the requirements of 37 CFR § 1.637(h)
[Rule 637(h)]. Fujita now says that we should not have dismissed
the preliminary motions. Instead, Fujita maintains that we
should have considered Fujita's merits opposition and should have
determined whether Winter 719 claims 7-12 and Spaleck claims 6-10
correspond to a count.
The merits panel finds itself in the position of having
granted the relief requested by a party only to find that the
party is now disatisfied and says we should do something else.
It is difficult to see how we misapprehended or overlooked any

A miscellaneous motion is a motion other than a preliminary motion or a motion to correct	30
inventorship. Preliminary motions generally relate to and involve a substantive issue.
- 4 -
point in granting Fujita's request that the Winter and Spaleck
preliminary motions be dismissed. As we said earlier, the
request for reconsideration is curious.
Despite its curious nature, we take this opportunity to
address some points raised by the request which are important to
the effective administration of justice in interference cases
before the board.
B. Interpretation of Rule 633(h)
In Part III-A and Part III-B of the MEMORANDUM IN SUPPORT OF
FINAL JUDGMENTS, the merits panel interpreted the meaning of
requirements set out in Rule 637(h). Under our interpretation, a
preliminary motion to add a reissue application is procedurally
proper only if the reissue applicant seeks to have all "new"
claims in the reissue application designated as corresponding to
the count.
1.
The rules permit the filing of three types of motions in
interference cases:
a. Preliminary motions--Rule 633.
b. Motions to correct inventorship--Rule 634.
c. Miscellaneous motions--Rule 635.30

The word "may" should be interpreted to mean that a party "may" or "may not" elect to file a	31
preliminary motion. The board, however, determines if a full (any preliminary motion) or limited
(e.g., only a preliminary motion based on no interference-in-fact) preliminary motion period will be
set, and if so, when (i.e., the stage of the interference) a preliminary motion can be filed. See
37 CFR § 1.636(a) [Rule 636(a)].
- 5 -
The issue before us on reconsideration involves preliminary
motions under Rule 633(h).
Rule 633 identifies in subparagraphs the types of
preliminary motions which may be filed. Rule 637 sets forth, in
corresponding subparagraphs, the procedural requirements for
filing a preliminary motion.
Rule 633(h) authorizes a party to file a preliminary motion
to add a reissue application to an interference. Rule 637(a)
sets out the general requirements for all motions. In addition,
Rule 637(h) sets out the requirements to be followed when filing
a preliminary motion to add a reissue application to the
interference.
Rule 633(h) provides:
A party may file the following preliminary motions:	[31]
* * *
(h) [w]hen a patent is involved in an interference and
the patentee has on file or files an application
for reissue ***, a [preliminary] motion to add the
application for reissue to the interference. See
§ 1.637(a) and (h).
Rule 637(h) provides (emphasis added):

With respect to the meaning of the language "[s]how the patentability of all claims *** which	32
correspond to *** [the] count," see Notice of the Chief Administrative Patent Judge, "Interference
Practice--Interference Rules Which Require a Party to "Show the Patentability" of a Claim," 1217 Off.
Gaz. Pat. & Tm. Office 17 (Dec. 1, 1998).
- 6 -
(h) A preliminary motion to add an application
for reissue under § 1.633(h) shall:
(1) Identify the application for reissue.
(2) Certify that a complete copy of the file
of the application for reissue has been
served on all opponents.
(3) Show the patentability of all claims in,
or proposed to be added to, the
application for reissue which correspond
to each count and apply the terms of the
claims to the disclosure of the
application for reissue; when	[32]
necessary a moving applicant for reissue
shall file with the motion an amendment
adding any proposed claim to the
application for reissue.
(4) Be accompanied by a motion under
§ 1.633(f) requesting the benefit of the
filing date of any earlier filed
application, if benefit is desired.
There are a variety of reasons why a patentee involved in an
interference might wish to add a reissue application to an
interference. A first reason is to avoid prior art relied upon
by an opponent. For example, an opponent may file a preliminary
motion alleging that the claims of a patent involved in the
interference are unpatentable over the prior art. Rule 633(a).

Cf. Sampson v. Comm'r of Patents, 195 USPQ 136 (D.D.C. 1976).	33
Cf. State of Israel v. Brenner, 273 F.Supp. 714, 155 USPQ 486 (D.D.C. 1967), aff'd, 400 F.2d	34
789, 158 USPQ 584 (D.C. Cir. 1968) (reissue may be filed to perfect claim for foreign priority not
perfected during prosecution of application which matured into patent sought to be reissued).
- 7 -
One response by a patentee could be to file a reissue and present
narrower claims to be designated as corresponding to the count
but which avoid the prior art. A second reason for filing a
reissue might be to perfect a claim to priority under 35 U.S.C.
§ 120 or 35 U.S.C. § 119.	33 34
2.
Each interference has a count which defines the interfering
subject matter between the parties to the interference. 37 CFR
§ 1.601(f) [Rule 601(f)]. When an interference is initially
declared, each claim of each application and patent involved in
an interference is designated (1) as corresponding to the count,
in which case the claim is "involved" in the interference within
the meaning of 35 U.S.C. § 135(a), or (2) as not corresponding to
the count, in which case it is not involved in the interference.
A claim which defines the same patentable invention as a count is
designated as corresponding to the count. 37 CFR § 1.603 [Rule
603], last sentence.

The word "includes" is used to take into account a possibility that some of the original	35
patent claims may not have been designated as corresponding to a count.
See Notice of Final Rule, Patent Appeal and Interference Practice, 60 Fed. Reg. 14488, 14517	36
col. 3 (Mar. 17, 1995).
- 8 -
3.
There are numerous possibilities when a patentee files an
application to reissue a patent during an interference. Three
possibilities are the following.
First, the patentee may present "new" claims, each of which
the patentee believes correspond to a count. Under this
possibility, the patentee should file a preliminary motion to add
the reissue application to the interference. 37 CFR § 1.662(b)
[Rule 662(b)] ("A patentee who files an application for reissue
which includes a claim that corresponds [or should be	[35]
designated to correspond ] to a count shall *** timely file a	36
preliminary motion under *** [Rule 633(h)] or show good cause why
the motion could not have been timely filed or would not be
appropriate."). Normally, a preliminary motion under Rule 633(h)
will be granted unless the reissue is filed in such an untimely
manner as to disrupt efficient administration of justice in the
interference consistent with 37 CFR § 1.601 [Rule 601]. Rule 601
provides that the rules should be interpreted to secure a just,
speedy and inexpensive determination of every interference.
Second, the patentee may cancel all original patent claims
and present only "new" claims, taking the position that none of

- 9 -
the "new" claims of the reissue application correspond to the
count. Under this possibility, judgment may be entered against
the patentee as to the original patent claims involved in the
interference, i.e., the patent claims designated as corresponding
to the count. Rule 662(b), first sentence ("If a patentee
involved in an interference files an application for reissue
during the interference and the reissue application does not
include a claim that corresponds to a count, judgment may be
entered against the patentee.").
Third, a patentee might file a reissue application
containing both (1) "original patent" claims which the patentee
believes correspond to a count and (2) "new" claims which the
patentee believes do not correspond to a count. The third
possibility is what occurred in these interferences.
4.
Any interpretation of Rule 637(h) also requires an
understanding of the preliminary motions which may be filed to
"redefine" the interfering subject matter. 37 CFR § 1.633(c)
[Rule 633(c)]. Rule 633(c) provides in relevant part:
A party may file the following preliminary motions:
* * *
(c) A motion to redefine the interfering subject
matter by
* * *

- 10 -
(2) amending an application claim corresponding
to a count or adding a claim in the moving party's
application to be designated to correspond to a count,
(3) designating an application or patent claim to
correspond to a count,
(4) designating an application or patent claim as
not corresponding to a count, or
(5) requiring an opponent who is an applicant to
add a claim and to designate the claim to correspond to a
count. See § 1.637(a) and (c).
It should be noted that not included among the list of
preliminary motions authorized by the rules is a preliminary
motion by an applicant to (1) add a claim to its application and
(2) have the claim designated as not corresponding to the count.
Accordingly, the rules do not contemplate an attempt by an
applicant to add a claim not involved in the interference, within
the meaning of 35 U.S.C. § 135(a), for the purpose of having the
claim remain not involved in the interference. Stated in other
terms, the rules do not authorized an applicant to obtain a
"declaratory judgment" that a new claim, added to an application
involved in an interference after it is declared, should not
become involved in the interference. Rather, after the
interference is terminated, any applicant is free to present any
new claim and the examiner will determine whether or not the new
claim is patentable. See 37 CFR § 1.658(c) [Rule 658(c)] and
In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992)

The Winter and Spaleck reissue application have never been involved in these interferences	37
because no preliminary motion under Rule 633(h) has been granted adding those reissue applications.
Hence, the provisions of Rule 633(c)(5) are not applicable to Winter 719 claims 7-12 and Spaleck 832
claims 6-10.
- 11 -
(party losing interference is not entitled to claims to same
patentable invention as count).
The rules do provide, however, for a party to require an
applicant opponent to add a claim to its application involved in
the interference and have the claim designated as corresponding
to the count. Rule 633(c)(5). If the preliminary motion is
granted, the applicant must present the claim, and upon
presentation, the claim will be designated as corresponding to
the count. If the preliminary motion is denied, the applicant is
not required to present the claim. The word "applicant" in	37
Rule 633(c)(5) facially would appear to include an applicant for
an original patent as well as an applicant seeking to reissue a
patent. We would not, however, be inclined to read the word
"applicant" in Rule 633(c)(5) as including a reissue applicant.
It is not clear that a party may require an opponent seeking
reissue to add any claim to its reissue application because a
party cannot compel an opponent reissue applicant to agree that
any particular error occurred in its patent sought to be
reissued. See 35 U.S.C. § 251 and Green v. The Rich Iron Co.,
944 F.2d 852, 20 USPQ2d 1075 (Fed. Cir. 1991).

- 12 -
5.
It does not take much imagination to see the parallel
between (1) an attempt by a party to add a new claim to an
application involved in an interference for the purpose of having
the claim designated as not corresponding to a count and (2) an
attempt by a reissue applicant to add to an interference a
reissue application containing a "new" claim and have that claim
designated as not corresponding to a count.
Rule 637(h)(3) requires the patentee involved in the
interference to "[s]how the patentability of all claims in, or
proposed to be added to, the application for reissue which
correspond to each count" (emphasis added). There is no
requirement for any discussion of a claim which would not
correspond to a count. If a patentee were allowed to add a
reissue application which contains "new" claims which it believes
do not correspond to a count, a reissue applicant would be able,
through the back door, to do what every other applicant cannot do
through the front door. Accordingly, we have interpreted Rule
633(h) to permit the filing of a preliminary motion to add a
reissue only if the reissue applicant agrees that all "new"
claims in the reissue application are to be designated as

In an interference involving a patent, it is possible that some claims of the patent are	38
designated as not corresponding to the count when the interference is initially declared. If a
reissue application is filed and the reissue applicant seeks to have the reissue application added to
the interference, it would be inappropriate for the PTO to insist that the reissue applicant cancel
from the reissue original patent claims which were not initially designated as corresponding to the
count. An original patent claim, designated initially as not corresponding to the count, can be
cancelled only if the reissue applicant (not the PTO and the opposing party) believes its presence in
the patent is an error. 35 U.S.C. § 251; Green v. The Rich Iron Co., 944 F.2d 852, 20 USPQ2d 1075
(Fed. Cir. 1991) (a district court cannot compel a patentee to seek reissue where the patentee does
not believe there is any error in its patent). An opponent, however, may move to have as designated
to correspond to a count an original patent claim initially designated as not corresponding to a
count. Rule 633(c)(3).
According to Fujita (Request, pages 2-3), it is far more likely that a party with an economic	39
interest will find applicable prior art than an examiner who Fujita says is under "severe time
constraints imposed by the examination process." Assuming Fujita is correct, even Fujita does not
categorically rule out the possibility that the examiner will know of, or find, appropriate prior art.
- 13 -
corresponding to the count. Our interpretation of Rule 637(h)	38
puts all applicants, including reissue applicants, on the same
playing field.
6.
Fujita says that we said Rule 637(h) is "confusing." We did
not use the word "confusing." The request for reconsideration
makes it plain that at least counsel for Fujita "heartily agrees"
that Rule 637(h) "is confusing" (Request, page 1). Despite
finding "portions" of our rationale "unpersuasive" (Request,
page 2), counsel for Fujita cannot deny that our interpretation	39
of Rule 637(h) is manifestly consistent with his request, on
behalf of Fujita, that the Winter and Spaleck preliminary motions
be dismissed. Curiously, the request never states the rationale
upon which Fujita would now interpret Rule 637(h) to reach the
object Fujita seeks.

We are not aware of any published precedent by the board interpreting Rule 637(h), or any	40
other notice interpreting Rule 637(h). Nevertheless, since our interpretation may be different from
that of prior panels or judges in specific unidentified cases, we have gone to some length to provide
what we hope is a "reasoned analysis" in support of our interpretation of Rule 637(b). Cf. Motor
Vehicle Mfgs Ass'n of the United States, Inc. v. State Farm Mutual Automobile Insurance Co., 463 U.S.
29, 57, 103 S.Ct. 2856, 2875 (1983); Greater Boston Television Corp. v. F.C.C., 444 F.2d 841, 852
(D.C. Cir. 1983) (an agency changing its course must supply a reasoned analysis). Suffice it to say
that in the future the interpretation made in this case will be uniformly applied.
In these interferences, for example, one difficulty involves an inability of the parties to	41
agree on which party has the burden of proof with respect to Fujita's contingent attempt to have the
Winter and Spaleck "new" reissue claims designated as corresponding to a count.
- 14 -
Our recent experience confirms our belief that the public is
not certain about how to proceed under Rule 637(h). We also
believe that it is entirely possible that administrative patent
judges of this board may not have administered Rule 637(h) in a
uniform manner. Thus, candor would require us to concede that it
is possible that some administrative patent judges may have
granted preliminary motions to add reissue applications which
contained "new" claims not designated as not corresponding to the
count while others have not. What admits of no doubt, based on	40
our experience, is that addition to an interference of an
application to reissue a patent involved in the interference
complicates the interference and generally makes it more
difficult to enter a final decision in a just, speedy and
inexpensive manner.41
Our interpretation of Rule 637(h) should (1) make
uniform the practice relating to adding reissue applications to
interferences, (2) eliminate possible inconsistent handling of
reissue applications from panel to panel or judge to judge and

- 15 -
(3) give the practicing interference bar a brighter line upon
which to base advice to clients as to whether to seek to add
reissue applications to interferences can be made.
The result reached in these interferences does not mean that
a reissue application added to an interference can never be
amended to include claims which do not correspond to a count.
After an interference is terminated, any applicant, including a
reissue applicant, may file an amendment containing new claims
when ex parte prosecution is resumed. If the applicant or
reissue applicant won the interference, estoppel under 37 CFR
§ 1.658(c) [Rule 658(c)] is not an issue. On the other hand, if
the applicant or reissue applicant lost the interference, then
post-interference ex parte examination will have to examine any
"new" claims taking into account the estoppel provisions of
Rule 658(c) and the Federal Circuit's Deckler decision.
Given our holdings in these interferences, we would be
surprised if in the future any patentee would seek to add a
reissue application containing "new" claims which the patentee
believes should be designated as not corresponding to a count.
Rather, the patentee would probably be inclined, and advised, to
wait until after the interference terminates and ex parte
prosecution resumes before adding any such "new" claims.

In appropriate circumstances, the rules provide for a petition to the Commissioner for an	42
interpretation of a rule. 37 CFR § 1.644(a)(1). Authority to decide the petition has been delegated
by the Commissioner to the Chief Administrative Patent Judge. MPEP, § 1002.02(f)(4)(a) (7th ed. July
1998). The Chief Judge is a member of the merits panel and presumably would not have joined the
opinion had he disagreed with the panel's interpretation of Rule 637(h). Hence, our interpretation in
this particular case is equally an interpretation of Rule 637(h) by the Commissioner.
- 16 -
7.
Fujita does not suggest that our interpretation is plainly	42
erroneous or inconsistent with the language of Rule 637(h).
Apparently overlooked by Fujita, is that jurisprudence which
holds that an agency interpretation of an agency regulation is
entitled to "controlling weight unless it is plainly erroneous or
inconsistent with the regulation." Udall v. Tallman, 380 U.S. 1,
16-17, 85 S.Ct. 792, 801 (1965), quoting Bowles v. Seminole Rock
Co., 325 U.S. 410, 413-14, 65 S.Ct. 1215, 1217 (1945). If our
interpretation is entitled to deference before the Federal
courts, then certainly Fujita also should be able to find its way
to defer to our interpretation and accept that, under our
interpretation of Rule 637(h), we gave Fujita precisely the
relief requested.
C. Fujita's workload argument
Fujita, characterizing our interpretation of Rule 637(h) as
establishing a "new practice," "submits" that the new practice
"may have been motivated by a desire to save the board work"
(Request, page 3). Fujita also states that the new practice may
not save work.

- 17 -
We are tempted to summarily dismiss the argument as a side
show apart from the main event. The "new practice" we are said
to have adopted is the "old practice" upon which Fujita based its
opposition to the Winter and Spaleck preliminary motions to add
reissue applications. While others not involved in this
interference may have experienced a "different practice," we find
it curious that Fujita characterizes our interpretation as a "new
practice."
In any event, judicial and administrative tribunals often
adopt policies which "save" work. When the policy is adopted
consistent with the statute and rules, saving work becomes
nothing more than efficient administration of justice.
In support of its "more work" argument, Fujita says that a
patentee involved in an interference might file two reissue
applications. The first reissue application would contain claims
which the patentee believes should correspond to the count. The
second reissue application would contain claims which the
patentee believes should not correspond to the count. Fujita
reminds us that the patentee would then be required to file in
the interference a notice of the filing of the reissue
applications. 37 CFR § 1.660(b) [Rule 660(b)]. Reissue
applications are open to public inspection. 37 CFR § 1.11(b)
[Rule 11(b)]. Fujita reasons that upon receipt of the Rule
660(b) notice, the opponent will (1) immediately order a copy of

15 U.S.C. § 1063.	43
15 U.S.C. § 1064.	44
- 18 -
the file wrapper of the reissue and (2) forthwith file a
miscellaneous Rule 635 motion seeking to have the Trial Section
add the second reissue to the interference pursuant to 37 CFR
§ 1.642 [Rule 642]. Accordingly, Fujita reasons that the work
the board is said to have been "saving" under the "new practice"
really does not amount to any saving after all.
Fujita misapprehends the role of Rule 642 and how it may be
efficiently implemented in practice. Specifically, Fujita
overlooks the fact that an interference is not a full-blown pre-
grant opposition to the grant of a patent or a full-blown patent
cancellation proceeding. While inter partes oppositions and	43
cancellations are provided in trademark cases before the Patent	44
and Trademark Office, Congress has not yet seen fit to provide
similar pre-grant oppositions and post-grant cancellation in
patent cases. Cf. Pub.L. 106-113, sec. 4502 (1999) (to be
codified at 35 U.S.C. § 122(c)) (explicitly providing that there
is to be no protest or other form of pre-issuance opposition to
the grant of a patent on an application after publication of the
application).
Action under Rule 642 is discretionary. Likewise
discretionary is how the board goes about determining how to
exercise discretion under Rule 642. In the scenario suggested by

See 35 U.S.C. § 135(a), which states that an interference may be declared when "in the	45
opinion" of the Commissioner there is interfering subject matter between two applications or an
application and a patent. A third-party has no standing to challenge a decision of the Commissioner
not to declare an interference. Thus, an opponent in an interference cannot compel the Commissioner
to be of "the opinion" that a second reissue application, not involved in an interference, interferes
with the third-party's application involved in an interference. Ewing v. U.S. ex rel. Fowler Car Co.,
244 U.S. 1, 11, 37 S.Ct. 494, 497-498 (1917) (it is the Commissioner who is to judge (be of the
opinion) whether an application will interfere with another pending application).
- 19 -
Fujita, a significant question is whether the Commissioner,
through the examiner, is of the "opinion" that an interference
exists between the second reissue and claims of the opposing
party's application already involved in an interference. If a
motion under Rule 642 is filed by a party applicant involved in
an interference to add a reissue application not involved in the
interference, the party applicant may be required by the board to
convince the examiner that an interference exists between the
application involved in the interference and the reissue
application. See 37 CFR § 1.604 [Rule 604]. Jurisdiction over
the application involved in the interference may be returned to
the examiner to make a determination if an interference exists.
37 CFR § 1.615(b) [Rule 615(b)]. If the examiner determines that
an interference exists, appropriate action can be taken to
declare a second interference or add the second reissue
application to an ongoing interference. On the other hand, if
the examiner determines that no interference exists, then there
is no reason to declare a second interference or add the second
reissue to an existing interference.45

- 20 -
D. Fujita's public policy argument
1.
After learning that we dismissed the Winter and Spaleck
preliminary motions, as Fujita had requested, Fujita had "second
thoughts."
Fujita asserts that "public policy" dictates that the merits
panel should resolve the issues of whether (1) Winter 719 claims
7-12 should be designated as corresponding to the count of
Interference 104,283 and (2) Spaleck 832 claims 5-10 should be
designated as corresponding to the count of Interference 104,284.
Needless to say, Fujita's second thoughts approach is not
consistent with the approach Fujita took in urging dismissal of
the Winter and Spaleck preliminary motions to add reissue
applications.
The heart of Fujita's "second thoughts" argument seems to be
(1) the proposition that Fujita believes that Winter 719 claims
7-12 and Spaleck 832 claims 5-10 are directed to the same
patentable invention as the counts and (2) that the designation
of claims is really a "patentability" issue. Basing the request
on what we believe is an unduly expansive reading of Schulze v.
Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed. Cir. 1998), Fujita
maintains that the "patentability" issue should be fully
developed and decided inter partes. We disagree and we reject,
in this case, Fujita's attempt to turn these interferences into a

- 21 -
pre-grant opposition against all "new" claims in the Winter and
Spaleck reissue applications, neither of which is involved in
these interferences.
2.
Fujita's reading of Schulze v. Green as providing for a pre-
grant opposition vis-a-vis the "new" claims in the Winter and
Spaleck reissue application, calls for some discussion leading up
to enactment by Congress of the Patent Law Amendments Act of
1984, Pub. L. 98-622, 98 Stat. 3383 (1984).
a.
Prior to the Patent Law Amendments Act of 1984, some
patentability issues could not be considered in an interference
declared under 35 U.S.C. § 135(a). Section 135(a) (1975) then
provided in part (emphasis added):
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,
he shall give notice thereof to the applicants, or
applicant and patentee, as the case may be. The
question of priority of invention shall be determined
by a board of patent interferences (consisting of three
examiners of interferences) [hereinafter interference
board] ***.
Facially, the language "question of priority of invention"
would seem to be limited to determining who, as between two or

- 22 -
more inventors, is the first inventor. See Tofe v. Winchell, 645
F.2d 58, 64-65, 209 USPQ 379, 385 (CCPA 1981) (Markey, C.J.,
concurring):
Hindsight is always easy, but in retrospect it does
appear that the court could as well have held none of
the listed issues ancillary to priority. It could have
interpreted the statute, 35 U.S.C. § 135, as meaning
only what is says, that is, that "The question of
priority of invention" and only that question "shall be
determined by a board of patent interferences."
Over the years, however, it turned out that what might seem
like a simple proposition became somewhat complicated. As a
result of decisions of the former U.S. Court of Customs and
Patent Appeals (hereinafter CCPA) and its predecessor courts, as
well as the interference board and its predecessors, it developed
that the issues which were required to be determined in an
interference were "priority" and "matters ancillary thereto."
See generally 2 Rivise & Caesar, Interference Law and Practice
§§ 251-253 (1943) and 4 Rivise & Caesar, Interference Law and
Practice §§ 692-696 (1948).
Ultimately, the notion that priority and matters ancillary
thereto were to be considered in interferences came to be
codified in the PTO regulations (37 CFR § 1.258(a)(1984), first
sentence):
In determining priority of invention, the ***
[interference board] will consider only priority of

- 23 -
invention on the evidence submitted and matters
ancillary thereto.
A determination of whether an issue is a "matter ancillary
thereto" was not necessarily easy. See, e.g., Tofe v. Winchell,
645 F.2d 58, 209 USPQ 379 (CCPA 1981). See also 130 Cong. Rec.
H10522, H10528 (col. 2) (daily ed. October 1, 1984) (section-by-
section analysis), reprinted in 1984 U.S.C.C.A.N. 5827, 5836
(1984) ("In addition, determining whether an issue is ancillary
to priority is a difficult and lengthy endeavor.").
One issue which was not "ancillary" was patentability of
claims involved in the interference over the prior art under
35 U.S.C. § 102 and/or 103. Glass v. DeRoo, 239 F.2d 402, 112
USPQ 62 (CCPA 1956).
There came a time when the Congress learned that the
inability of the interference board to consider patentability
vis-a-vis the prior art created certain complications. 130 Cong.
Rec. H10522, H10528 (col. 2) (daily ed. October 1, 1984)
(section-by-section analysis), reprinted in 1984 U.S.C.C.A.N.
5827, 5836 (1984) (the restriction on the interference board's
"jurisdiction unduly complicates the process for obtaining a
patent based on an application which becomes involved in an
interference").
To correct the complications, Congress undertook, inter
alia, to amend 35 U.S.C. §§ 7 and 135(a). Basically, Congress

- 24 -
proposed to combine the interference board with the patent
appeals board and give the combined board jurisdiction over
priority and patentability in interference cases. Specifically,
it was proposed to amend § 7 from:
The Commissioner, the deputy commissioner, the
assistant commissioners, and the examiners-in-chief
shall constitute a Board of Appeals, which on written
appeal of the applicant, shall review adverse decisions
of examiners upon applications for patents.
to (emphasis added to show the essence of proposed changes to
§ 7)
The Commissioner, the deputy commissioner, the
assistant commissioners, and the examiners-in-chief
shall constitute a Board of Patent Appeals and
Interferences.
The Board of Patent Appeals and Interferences
shall, on written appeal of an applicant, review
adverse decisions of examiners upon applications for
patent and shall determine priority and patentability
of invention in interferences declared pursuant to
section 135(a) of this title.
S. 1538, 98th Cong., 2d Sess., § 11 (June 26 (legislative day,
June 25), 1984).
In § 14 of the same bill it was also proposed to amend
§ 135(a), in part, from:

- 25 -
The question of priority of invention shall be
determined by a board of patent interferences
(consisting of three examiners of interferences) ***
to (emphasis added to show the essence of proposed changes to
§ 135(a))
The Board of Patent Appeals and Interferences shall
determine the priority and patentability of invention
in interferences.
A subsequent House bill (H.R. 6286), the bill which
ultimately passed, also proposed changes to §§ 7 and 135(a),
using slightly different language. Specifically, it was proposed
to amend § 135(a), in part, to read (emphasis added to show
differences between S. 1538 and H.R. 6286)
The Board of Patent Appeals and Interferences shall
determine questions of the priority of the inventions
and may determine questions of patentability [of
invention in interferences].
H.R. 6286, 98th Cong., 2d Sess., § 202 (Sept. 20, 1984).
At the end of the 98th Congress, H.R. 6286 passed both the
House and the Senate and § 135(a) was amended, inter alia, to
provide (emphasis added):
The Board of Patent Appeals and Interferences shall
determine questions of priority of the inventions and
may determine questions of patentability.

- 26 -
Section 7 was also amended to create a Board of Patent Appeals
and Interferences and to provide that the board shall decide
priority and patentability in interference cases.
Insofar as we are aware, there is no legislative history,
in the form of floor debates or committee reports, which would
explain why a change occurred in the language of § 135(a) as
proposed to be amended by § 14 of S. 1538 vis-a-vis the language
ultimately enacted.
b.
The Patent and Trademark Office views § 135(a) as giving the
board subject matter jurisdiction over priority and patentability
in interference cases.
The office views § 7 as identifying the individuals who
shall constitute the board and who have authority to act, as
members of the board, to make decisions required by 35 U.S.C.
§ 134 (ex parte appeals) and 35 U.S.C. § 135(a) (interferences).
c.
After enactment of the Patent Law Amendments Act of 1984,
there came time when the Patent and Trademark Office, through
its Board of Patent Appeals and Interferences, had occasions
to apply § 135(a), as amended, to specific facts in specific
interferences.

- 27 -
(1)
Perkins v. Kwon
One occasion occurred in Kwon v. Perkins, 6 USPQ2d 1747 (Bd.
Pat. App. & Int. 1988).
The interference involved a Kwon application and a Perkins
patent. At an appropriate time in the interference, Perkins
timely filed a procedurally proper preliminary motion under
Rule 633(a). Perkins alleged that the Kwon claims corresponding
to the count were unpatentable under 35 U.S.C. § 102(b)/103 over
the prior art. 6 USPQ2d at 1750 (¶ bridging cols. 1 and 2).
Ultimately the interference reached final hearing. Before an
expanded nine-member panel at final hearing there were at least
two issues, including (1) priority of invention and (2) the
patentability of the Kwon claims. It was determined that Kwon
was the prior inventor. 6 USPQ2d at 1753 (col. 2). It was also
determined that Perkins had sustained its burden of establishing
that the Kwon claims were unpatentable over the prior art.
6 USPQ2d at 1751 (col. 2). The panel divided on the precise
relief to be given. A majority concluded that a judgment should
be entered against both Perkins (based on 35 U.S.C. § 102(g)) and
Kwon (based on 35 U.S.C. § 102(b)/103). A minority insisted that
there was no priority issue to be resolved once it had been
determined that the Kwon claims were unpatentable.

A count is a vehicle for contesting priority and determines what evidence is relevant on the	46
issue of priority. Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA 1977); Case v. CPC
International, Inc., 730 F.2d 745, 221 USPQ 196, 199 (Fed. Cir.), cert. denied, 469 U.S. 872 (1984).
The count might, and need, not be patentable to either party. Squires v. Corbett, 560 F.2d at 533,
194 USPQ at 519. Accordingly, Perkins' preliminary motion under Rule 633(a) attacked the
patentability of Kwon's claims corresponding to the count and not the count per se.
- 28 -
Dissatisfied, Perkins sought judicial review in the Federal
Circuit. Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed.
Cir. 1989). The Federal Circuit panel explained the issue before
it as follows (886 F.2d at 326, 12 USPQ2d at 1309):
The question on appeal is whether it was
appropriate for the Board to determine priority of
invention in the interference, and to enforce the
consequences thereof against Perkins, when the Board
held that the count was [sic--claims of Kwon
corresponding to the count were ] not patentable to	[46]
Kwon, a party to the interference.
The Federal Circuit affirmed, holding that the board acted
properly in resolving patentability against Perkins' patent
claims even though Perkins had prevailed on priority. "We agree
with the Board that issues of patentability and priority that
have been fully developed before the Board should be resolved by
the Board." 886 F.2d at 328, 12 USPQ2d at 1311. The panel also
made the observation that the word "may" in the phrase "shall
determine questions of priority of the inventions and may
determine question of patentability" means that the board shall
decide questions of patentability when "placed in issue" and
"there had been adduced an appropriate record." While we have no

- 29 -
quarrel in the abstract with the observation, we believe, for
reasons hereinafter given, that the observation is subject to
misinterpretation as applied to the actual wording of § 135(a)
and regulations promulgated to implement the Patent Law
Amendments Act of 1984.
(2)
Schulze v. Green
While Schulze v. Green, 136 F.3d 786, 45 USPQ2d 1769 (Fed.
Cir. 1998), is somewhat more complicated than Kwon v. Perkins,
from a procedural point of view, it reaches a very similar
result.
The interference involved a Schulze application versus a
Green patent. A merits panel of the board held that Schulze was
the prior inventor. Hence, the Green patent claims corresponding
to the count were held to be unpatentable to Green under
35 U.S.C. § 102(g) based on priority of invention. During the
interference, Schulze had filed a Rule 634 motion to correct
inventorship. The Rule 634 motion fairly placed in issue the
question of the inventorship of the invention claimed in the
Schulze application. However, for a variety of reasons the
Schulze Rule 634 motion was defective. A majority of the merits
panel determined that priority having been decided, the issue of
the inventorship of the Schulze application could be considered

We agree that the filing of a motion generally places a matter in issue, provided the motion	47
is timely filed and that the motion complies with all procedural requirements of the rules.
- 30 -
upon resumption of ex parte prosecution. Green disagreed and
sought judicial review in the Federal Circuit.
The Federal Circuit agreed with Green that the inventorship
issue should be considered inter partes in the interference. The
Federal Circuit's opinion notes that "[t]he very filing of this
motion fairly placed the issue of inventorship of *** [Schulze's]
application in the interference." 136 F.3d at 790, 45 USPQ2d	47
at 1773. The Federal Circuit further observed that "[o]nce an
issue has been fairly raised during the course of an interference
proceeding, the facts relating to that issue should be fully
developed so that the issue can be properly adjudicated ***."
Id. It was noted, however, that "[a] defective motion under the
regulation cannot support adjudication of the inventorship during
the interference." Id.
(3)
The significant difference between the facts in Kwon v.
Perkins and Schulze v. Green, on the one hand, and these
interferences, on the other hand, is that the claims, as well as
the patent and application, under consideration before the
Federal Circuit were involved in the interference. The Winter
and Spaleck reissue applications are not involved in these
interferences.

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d.
After Kwon v. Perkins and Schulze v. Green, parties in
interference cases, including apparently now Fujita, have taken
the position that any patentability issue may be raised at any
time and that the board is obligated to consider each and every
one of those patentability issues. We believe such an expansive
interpretation of § 135(a) and the two Federal Circuit opinions
is unwarranted. We express our concern, in this respect, because
the efficient administration of justice in interference cases is
at stake.
Section 135(a) states that the board may--not shall--
consider issues of patentability. The Commissioner has
determined, through the rulemaking process, what patentability
issues will be considered by the board (see Rules 633 and 634)
and when those issues will be considered (see Rule 636(a)). The
rules, consistent with § 135(a) provide that essentially any
patentability issue, including patentability issues under
35 U.S.C. §§ 102, 103 and 112, can be raised in an interference.
However, to raise a patentability issue, a party must timely file
a Rule 633 preliminary motion which complies procedurally with
the rules. Moreover, any preliminary motion must be filed when
authorized by the board--not at any time.
Our current practice is to conduct a telephone conference
call about two months after an interference is declared. By that

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time, the parties generally have copies of the files of any
patent or application involved in the interference. The purpose
of the conference call is to set times for taking action during
the preliminary motion phase of the interference. Two days prior
to the conference call, the parties submit (generally by
facsimile) a list of proposed preliminary motions. The list is
manifestly tentative, because often more time will be needed to
thoroughly study the files. During the telephone conference
call, an administrative patent judge explores ways in which the
interference can be resolved in an efficient manner. Also
considered is whether some preliminary motions can be eliminated
or whether others should be filed. As a consequence of the
conference call, the issues to be raised can be limited or
clarified so that the interference may be resolved in a just,
speedy and inexpensive manner in accordance with Rule 601.
Despite the language of § 135(a) and Rule 633, there are
circumstances where a decision on priority and a decision on
patentability may not be appropriate. An example of a case where
a decision on priority may not be appropriate, indeed does not
make sense, is where a party files a preliminary motion for
judgment based on no interference-in-fact. An interference-in-
fact exists when at least one claim of a party and at least one
claim of an opponent are directed to the same patentable
invention. Rule 601(j). If it turns out that there is no

The challenge would not be based on priority, because even if the party is first, the	48
opponent's claimed invention is patentably distinct. The challenge could, however, be based on prior
art applicable against the opponent, but not the party.
- 33 -
interference-in-fact, it means that the Commissioner, through the
board, cannot be of the "opinion" that there is interfering
subject matter. We question whether § 135(a) should be read to
permit a party with no claims which interfere with claims of an
opponent to challenge the patentability of the opponent's	48
claims. The challenge would, in effect, amount to a pre-grant
opposition against an application or a post-grant cancellation
proceeding against a patent.
Another instance where it may not be consistent with
efficient administration of justice to decide priority is the
case where all the claims of both parties corresponding to the
count are held to be unpatentable over the prior art.
A third circumstance might be a case where a patentee can
establish that an applicant derived an invention from the
patentee. Under such a circumstance, it may be inappropriate to
let an applicant benefit from its "less than good faith" by
permitting an attack on the patentability of claims in the
patent.
In our view the Federal Circuit has not had occasion to
determine the limits, if any, on the reach of § 135(a).
Obviously, the limits, if any, on § 135(a) will have to be

- 34 -
determined on a case by case basis. What we are certain about,
however, is that the Federal Circuit has not held that:
(1) a party is entitled to a resolution on the merits
of an issue not timely raised;
(2) a party is entitled to a resolution on the merits
of an issue raised in a motion or preliminary
motion which procedurally fails to comply with the
regulations;
(3) a party is entitled to a resolution on the merits
of an issue raised in a preliminary motion filed
prior to the preliminary motion phase of the
interference;
(4) an interference is a pre-grant opposition
proceeding where a party may oppose the grant to
an opponent of claims in an application not
involved in the interference;
(5) an interference is a post-grant cancellation
proceeding where a party may seek to cancel claims
of a patent not involved in an interference;
and/or
(6) that the Commissioner must determine in a
particular manner how the Commissioner shall be of
the "opinion" that an interference exists or does
not exist.
3.
Fujita's public policy argument seeks to expand the
rationale of Kwon v. Perkins and Schulze v. Green to include a
right to raise an issue of the patentability of a reissue

We are not convinced, however, that Winter and Spaleck have had a full opportunity to present	49
their case. Since we are not adding the reissue applications to the interference, we have decided
that further development of a factual record by Winter and Spaleck is not consistent with a just,
speedy and inexpensive resolution of these two interferences.
- 35 -
application not involved in the interference. Neither § 135(a)
nor Federal Circuit or board precedent goes that far.
4.
We recognize that both Fujita and Winter/Spaleck have
addressed, at least in part, the "merits" of Fujita's contingent
position that Winter 719 claims 7-12 and Spaleck 832 claims 6-10
correspond or do not correspond (depending on their point of
view) to counts in these interference. We also recognize that
evidence has been submitted by both parties.
The parties were allowed to develop, at least in part, the
merits. However, it turns out that our interpretation of Rule	49
637(h) does not permit Winter and Spaleck to add their reissue
applications to the interference. What occurred in this
interference demonstrates why it was imperative for us to make a
definitive interpretation of Rule 637(h) so that unnecessary
expense might be spared other patentees and applicants in future
interferences.
E. Fujita's request to participate in the ex parte
examination of the Winter and Spaleck reissue
applications
Fujita requests that we recommend under 37 CFR § 1.659(c)
that Fujita be allowed to participate in ex parte prosecution of

- 36 -
the Winter and Spaleck reissue application when the interference
terminates.
We decline to make the requested recommendation. Fujita is
not without a remedy because it can petition directly to the
Office of the Assistant Commissioner for Patents for leave to
participate. Whether such leave would be granted is matter
within the sole discretion of the Office of the Assistant
Commissioner for Patents. We intimate no views on how that
office should resolve any petition filed by Fujita.
F. Order
Fujita's request for reconsideration is, for the reasons
given, denied.
______________________________
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )

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cc (via Federal Express)
Attorney for Winter
(real party in interest
Targor GmbH):
Rudolf E. Hutz, Esq.
Ashley I. Pezzner, Esq.
Thomas M. Meshbesher, Esq.
CONNOLLY, BOVE, LODGE & HUTZ
1220 Market Street
P.O. Box 2207
Wilmington, DE 19899
Tel: 302-658-9141
Fax: 302-658-5614
E-mail: REH@CBLHLAW.com
E-mail: AIP@CBLHLAW.com
Attorney for Fujita
(real party in interest
Mitsubishi Petrochemical Company, Ltd):
Charles L. Gholz, Esq.
Alton D. Rollins, Esq.
OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, P.C.
1755 Jefferson Davis Highway, Fourth Floor
Arlington, VA 22202
Tel: 703-413-3000
Tel: 703-412-6485 (Gholz)
Tel: 703-412-6475 (Rollins)
Fax: 703-413-2220
E-mail: cgholz@oblon.com
E-mail: arollins@oblon.com