(118) Interference Practice - Interference Rules
Which Require a Party to
"Show the Patentability" of a Claim
Certain preliminary motions require a party in an interference to
"show the patentability" of claims. For example, a preliminary motion
under 37 CFR 1.633(c)(2) to amend or add a claim to an application
involved in an interference, requires the moving party to:
Show the patentability to the applicant of each claim proposed to be
amended or added and apply the terms of the claim proposed to be amended
or added to the disclosure of the application***.
37 CFR 1,637(c)(2)(iii). Similar requirements appear in
(1) 37 CFR 1,637(c)(1)(ii) [preliminary motion to add or substitute a
count];
(2) 37 CFR 1,637(c)(1)(iii) [preliminary motion to add or substitute
a count];
(3) 37 CFR 1.637(c)(5)(ii) [preliminary motion to have an opponent
add a claim to its application];
(4) 37 CFR 1.637(d)(3) [preliminary motion to substitute a party's
different application];
(5) 37 CFR 1.637(e)(1)(iv) [preliminary motion to declare an
additional interference];
(6) 37 CFR 1.637(e)(1)(v) [preliminary motion to declare an
additional interference];
(7) 37 CFR 1,637(e)(2)(iii) [preliminary motion to declare an
additional interference];
(8) 37 CFR 1.637(e)(2)(iv) [preliminary motion to declare an
additional interference]; and
(9) 37 CFR 1.637(h)(3) [preliminary motion to add reissue application
to interference].
The requirement of the rules that a party "show the patentability" of a
claim may have led to some confusion as to precisely what is required to
comply with the rules. This notice provides guidance with respect to the
requirement to "show the patentability."
The requirement that a party "show the patentability" of a claim
should not be construed as requiring a party to prove a negative, i.e.,
that there is no prior art which would anticipate the claim under 35
U.S.C. 102 or render the claim unpatentable under 35 U.S.C. 103.
In this respect, the burden of establishing that a claim is not
patentable generally falls on the party or individual alleging
unpatentability. See, e.g., 35 U.S.C. 102 which provides that an
applicant is "entitled to a patent unless ***. " See also, Horton v.
Stevens, 7 USPQ2d 1245, 1246-47 (Bd. Pat. App. & Int. 1988). Consistent
with 37 CFR 1,601, which provides that the rules should be construed
to secure the just, speedy and inexpensive determination of
interferences, the rules requiring a party to "show the patentability"
of a claim normally should be interpreted as requiring that a party
establish that the subject matter of the claim is described in the
specification in the manner required by the first paragraph of 35 U.S.C.
112. See also 37 CFR 1.75(d)(1). The requirement can most
effectively be met by reproducing the claim, and following each element
recited in the claim, and within braces { } and in bold, inserting a
specific reference to the column and line and/or drawing figure and
numeral where the element is described in the specification.
An exception would be a situation where a party files a preliminary
motion under 37 CFR 1.633(i) in response to an opponent's preliminary
motion under 37 CFR 1.633(a) for judgment. Since the party knows the
basis for the opponent's preliminary motion for judgment, the party
should also "show the patentability" of the claims proposed to be added
by the preliminary motion under 37 CFR 1.633(i) vis-a-vis the
opponent's basis in the preliminary motion under 37 CFR 1. 633(a).
Compare 37 CFR 1.111(c) and 1.119.
The precise basis upon which a party is required to "show the
patentability" necessarily will vary on a case-by-case basis.
November 6, 1998 BRUCE H. STONER, JR.
Chief Administrative Patent Judge
[1217 OG 17]