Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
BOGENTOFT ET AL.
Interference No. 101,403
January 29, 1987
1776 K Streer, NW
Washington, DC 20006
For Bogentoft et al.
Brumbaugh, Graves, Donohue and Raymond
New York, NY 10112
Ian A. Calvert
PETITION--REQUEST FOR CLARIFICATION
Theeuwes has filed a paper entitled "REQUEST FOR CLARIFICATION OF THE DECISION OF THE COMMISSIONER (PAPER NO. 58) ON THE THEEUWES PETITION UNDER RULE 644." In this paper, Theeuwes asserts that certain prior actions of the Examiner-in-Chief with respect to Theeuwes' preliminary motions were inconsistent with the statement in the decision that it is accepted interference practice to permit substitution of a broader count to encompass a party's best proofs.
A review of the file shows that in Paper No. 45 the Examiner-in-Chief dismissed Theeuwes' motion to amend the count (included in Paper No. 13) as moot, and denied the motion to substitute proposed count A (Paper No. 14) because the proposed count recited several species which were separately patentable inventions. [FN1] It is not apparent that either of these decisions was inconsistent with Paper No. 58. The statement in Paper No. 58 that "it is accepted interference practice to permit the substitution of a broader count when a party's best proofs lie outside the scope of the present count" was not intended to indicate that the count might be broadened to such an extent as to include another, separately patentable invention. For example, if the count were drawn to species A and one party's best proofs were allegedly to species B, it would be improper to broaden the count to a Markush group of species A and B if species B were a separate patentable invention (as defined in 37 CFR 1.601(n)) with respect to species A. If the count were broadened to cover species A and B, the anomalous possibility would arise that the one party could win priority as to both of the separate patentable inventions (A and B) merely by proving priority as to one of them (B). Cf. Godtfredsen v. Banner, 598 F.2d 589, 202 USPQ 7 (CCPA 1979) and 503 F.Supp. 642, 207 USPQ 202 (D.D.C.1980).
The request for clarification is granted to the extent of the foregoing discussion, but is denied insofar as it seeks any modification of Paper No. 58.
FN1. A request by Theeuwes for reconsideration of this decision is currently pending.