Tseng v. Doroodian-Shoja

Informative decision only: persuasive authority, not binding precedent. When a party moves for no interference-in-fact, it bears the burden of showing patentable distinctness in either direction: either that none of its claims corresponding to the count would have been anticipated by or obvious over any of the opponent's involved claims, or that none of the opponent's corresponding claims would have been anticipated by or obvious over any of its own. The Board decides this by construing each side's claims, the movant's means-plus-function claim being limited to the corresponding embodiments adequately disclosed and equivalents, and the opponent's application claims being read under the broadest reasonable interpretation consistent with its specification. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision on how to decide interference-in-fact. For the party seeking an interference, it shows that a motion for no interference-in-fact can succeed on a single claim feature (here a "multiple points-in-time" indication) that the opponent's claims neither expressly nor inherently contain, and that the party's earlier unsuccessful arguments to the examiner do not estop it. For the party moving for no interference-in-fact, the opposing party's evidence is tested against its own specification, so a proposed claim that keeps the same limitation will not salvage an interference. The decision cites no Federal Circuit or CCPA authority as binding the interference-in-fact analysis; it names Perkins v. Kwon and Nitz v. Ehrenriech only in the briefing questions on whether to reach patentability, and the Board treated that issue as one of first impression. LEGAL TEST OR STANDARD: The Board stated that patentable distinctness in either direction suffices, and that the movant must show either (1) that none of its claims corresponding to the count would have been anticipated by or rendered obvious over any of the opponent's involved claims, or (2) that none of the opponent's corresponding claims would have been anticipated by or rendered obvious over any of the movant's involved claims. Anticipation was found lacking because a claim feature was not expressly or inherently in the opposing claims. Obviousness was assessed with a finding on the level of ordinary skill, and a prima facie showing of nonobviousness was held enough where the opponent did not contend otherwise. TRIGGERING FACTS: Senior party patentee Doroodian moved under 37 CFR 1.633(b) for no interference-in-fact and chose to show that its claims 1-6 were not anticipated by or obvious over Tseng's involved claims. The decisive difference was that Doroodian's means-plus-function claim 1, as limited by the specification and prosecution statements of 'progressive' blade-wear indication, required a 'multiple points-in-time' visual indication. Tseng's specification disclosed only an indication that the unit had reached its useful life, so Tseng's claims were limited to a 'single point-in-time' indication. KEY QUOTE: "Patentable distinctness between the parties' claims, in either direction, is sufficient to demonstrate no interference-in-fact." (Paper 85, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. Paper 91 cites Charlton v. Rosenstein, No. 104,148, 2000 Pat. App. Lexis 4 (Bd. Pat. App. & Int. (Trial Section) 2000) only for the point that a final hearing on issues decided by a three-judge panel would be in the nature of a request for reconsideration. PRACTICE TIP: When moving for no interference-in-fact, pick one direction and show patentable distinctness claim by claim, anchoring any distinguishing feature in claim language, the disclosed embodiments for a means-plus-function limitation, and prosecution statements, because the Board will not add embodiments to a specification. Also file a responsive motion under 37 CFR 1.633(i) to add claims if you want to redefine the interference, since the Board treated the failure to file one as fatal absent its own leniency.