Chapter   2300  Interference Proceedings
---SECTION---2300 [No Text]

---SECTION---2300.01 Introduction

35 U.S.C. 135 Interferences.

(a) Whenever an application is made for a patent which, in the opinion
of the Commissioner, would interfere with any pending application, or
with any unexpired patent, an interference may be declared and the
Commissioner shall give notice of such declaration to the applicants, or
applicant and patentee, as the case may be. The Board of Patent Appeals
and Interferences shall determine questions of priority of the
inventions and may determine questions of patentability.  Any final
decision, if adverse to the claim of an applicant, shall constitute the
final refusal by the Patent and Trademark Office of the claims involved,
and the Commissioner may issue a patent to the applicant who is adjudged
the prior inventor. A final judgment adverse to a patentee from which no
appeal or other review has been or can be taken or had shall constitute
cancellation of the claims involved in the patent, and notice of such
cancellation shall be endorsed on copies of the patent distributed after
such cancellation by the Patent and Trademark Office.

(b) A claim which is the same as, or for the same or substantially the
same subject matter as, a claim of an issued patent may not be made in
any application unless such a claim is made prior to one year from the
date on which the patent was granted.

(c) Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the
interference, shall be in writing and a true copy thereof filed in the
Patent and Trademark Office before the termination of the interference
as between the said parties to the agreement or understanding.  If any
party filing the same so requests, the copy shall be kept separate from
the file of the interference, and made available only to Government
agencies on written request, or to any person on a showing of good
cause.  Failure to file the copy of such agreement or understanding
shall render permanently unenforceable such agreement or understanding
and any patent of such parties involved in the interference or any
patent subsequently issued on any application of such parties so
involved. The Commissioner may, however, on a showing of good cause for
failure to file within the time prescribed, permit the filing of the
agreement or understanding during the six-month period subsequent to the
termination of the interference as between the parties to the agreement
or understanding.

The Commissioner shall give notice to the parties or their attorneys of
record, a reasonable time prior to said termination, of the filing
requirement of this section. If the Commissioner gives such notice at a
later time, irrespective of the right to file such agreement or
understanding within the six-month period on a showing of good cause,
the parties may file such agreement or understanding within sixty days
of the receipt of such notice.

Any discretionary action of the Commissioner under this subsection shall
be reviewable under section 10 of the Administrative Procedure Act.

(d) Parties to a patent interference, within such time as may be
specified by the Commissioner by regulation, may determine such contest
or any aspect thereof by arbitration. Such arbitration shall be governed
by the provisions of title 9 to the extent such title is not
inconsistent with this section. The parties shall give notice of any
arbitration award to the Commissioner, and such award shall, as between
the parties to the arbitration, be dispositive of the issues to which it
relates. The arbitration award shall be unenforceable until such notice
is given. Nothing in this subsection shall preclude the Commissioner
from determining patentability of the invention involved in the
interference.

An interference is a proceeding, conducted before the Board of Patent
Appeals and Interferences (Board), to determine priority of invention
between a pending application and one or more pending applications
and/or one or more unexpired patents. Jurisdiction to decide an
interference is granted by  35 U.S.C. 135(a), which also grants the
Board discretion to determine questions of patentability in the
proceeding.

The Patent and Trademark Office (PTO) does not have jurisdiction to
conduct interferences which involve only patents, i.e., which do not
involve at least one pending application. Jurisdiction over those
proceedings is conferred on the Federal courts by  35 U.S.C. 291.

Since the Board is the body which has jurisdiction over interferences
conducted in the PTO, the examiner's involvement in the proceeding, once
the interference has been declared, is minimal. This chapter therefore
is generally limited to information concerning those aspects of an
interference, including preliminary and subsequent proceedings, which
are within the jurisdiction of, or are relevant to, the examiner. It
does not include the procedure which is followed before the Board during
the interference. Persons seeking information concerning that procedure
should consult the text of the pertinent rules,  37 CFR 1.601 through
1.688, the notice of rulemaking and accompanying comments adopting those
rules, published in the Federal Register at 49 FR 48416 (Dec.12, 1984),
and in the Patent and Trademark Office Official Gazette at 1050 O.G. 385
(Jan.29, 1985), as well as the notices amending the rules, and the
comments therein. These notices and comments, as well as other notices
pertinent to current interference practice and procedure, are as
follows:

Correction Notice, 50 FR 23122 (May 31, 1985), 1059 O.G. 27 (Oct. 22,
1985);

Notices of Rulemaking: 52 FR 13833 (Apr. 27, 1987), 1080 O.G. 15 (July
14, 1987);

53 FR 23728 (June 23, 1988), 1092 O.G. 26 (July 12, 1988);

54 FR 29548 (July 13, 1989), 1105 O.G. 5 (Aug. 1, 1989);

  56 FR 42528 (Aug. 28, 1991)*, 1136 O.G. 40 (Mar. 17, 1992);

 *corrected, 56 FR 46823 (Sep. 16, 1991)

 58 FR 49432 (Sep. 23, 1993), 1155 O.G. 65 (Oct. 19, 1993);

 60 FR 14488 (Mar. 17, 1995), 1173 O.G. 36 (Apr. 11, 1995).

Notices: Access to Interference Settlement Agreements by Government
Agencies, 972 O.G. 2 (July 4, 1978); Interference Practice: Response to
Order to Show Cause Under  37 CFR 1.640, 1074 O.G. 4 (Jan. 6, 1987);
Interference Practice: Fraud and Inequitable Conduct Allegations, 1074
O.G. 42 (Jan. 27, 1987); Interferences - Preliminary Motions for
Judgment, 1118 O.G. 19 (Sep. 11, 1990); Consideration of Fraud and
Inequitable Conduct in Patent Interference Cases, 1133 O.G. 21 (Dec. 10,
1991);   Interference Practice: Consideration of Fraud and Inequitable
Conduct (Id.); Interference Practice: Matters Relating to Belated
Preliminary Motions, 1144 O.G. 8 (Nov. 3, 1992); Availability of
Interference Files and Interference Related Application and Patent
Files, 1184 O.G. 15 (Mar. 5, 1996).

The text of the notices listed above is available on the PTO web page at
www.uspto.gov.

---SECTION---2300.02 Provoking an Interference

  An interference may be provoked in several different ways, depending
upon the circumstances. Each of these is covered in detail in the
subsequent sections.

(A) An interference between pending applications is normally initiated
by the examiner, but occasionally may be requested by an applicant who
has become aware of another application which may be claiming the same
invention. See MPEP Section  2303 and Section  2304. If the applications
are not claiming the same patentable invention, it may be necessary for
the examiner to suggest a claim in one or more of the applications.  See
MPEP Section  2305.

(B) An interference between a pending application and a patent is
normally provoked by the applicant. See MPEP Section  2306 -  Section 
2308.

---SECTION---2301.01 Preliminaries to an Interference

An interference is often an expensive and time-consuming proceeding.
Yet, it is necessary to determine priority when two applicants, or an
applicant and a patentee, are claiming the same patentable subject
matter and their filing dates are so close together that there is a
reasonable possibility that the first to file is not the first inventor. 
The fact that an application is a reissue application does not preclude
it from being involved in an interference.

The greatest care must therefore be exercised both in the search for
interfering applications and in determining whether an interference
should be declared.  Also the claims in recently issued patents,
especially those used as references against the application claims,
should be considered for possible interference.

The question of the propriety of initiating an interference in any given
case is affected by so many factors that a discussion of them here is
impracticable.  Some circumstances which render an interference
unnecessary are hereafter noted, but each instance must be carefully
considered if serious errors are to be avoided.

In determining whether an interference is necessary, a claim should be
given the broadest interpretation which it reasonably will support,
bearing in mind the following general principles:

(A) The interpretation should not be strained;

(B) Express limitations in the claim should not be ignored nor should
limitations be read therein;

(C) Before a claim (unless it is a patented claim) is considered as the
basis for the count of an interference, the claim should be allowable
and in good form. No pending claim which is indefinite, ambiguous or
otherwise defective should be the basis for a count of an interference;

(D) A claim copied from a patent, if ambiguous, should be interpreted in
the light of the patent in which it originated for purposes of
determining whether a party has a right to copy a claim;

(E) An interference will not normally be instituted between cases which
have the same inventive entity, or a common assignee. See  37 CFR
1.602(a).  Such cases should be treated as set forth in MPEP Section 
804 et seq.  Also see MPEP Section  2302; and

(F) If doubts exist as to whether there is an interference, an
interference should not be declared.

---SECTION---2301.01(a) In Different Groups

If there is a prospective interference between applications assigned to
different groups, the applications should be transferred to the group
where the controlling interfering claim would be classified.  After
termination of the interference, further transfer may be necessary
depending upon the outcome.

---SECTION---2301.01(b) The Interference Search

The search for interfering applications must not be limited to the class
or subclass in which the application is classified, but must be extended
to all classes, in and out of the examining group, which it has been
necessary to search in the examination of the application.  See MPEP
Section  1302.08.

Moreover, the possibility of the existence of interfering applications
should be kept in mind throughout the prosecution.  Where the examiner
at any time finds that two or more applications are claiming the same
invention and the examiner does not deem it expedient to institute
interference proceedings at that time, the examiner should make a record
of the possible interference as on the face of the file wrapper in the
space reserved for class and subclass designations.  Such notations,
however, if made on the file wrapper or drawings, must not be such as to
give any hint to the applicants, who may inspect their own applications
at any time, of the date or identity of a supposedly interfering
application.  Application numbers or filing dates of conflicting
applications must never be placed upon drawings or file wrappers.  A
book of "Prospective Interferences" should be maintained containing
complete data concerning possible interferences and the page and line of
this book should be referred to on the respective file wrappers or
drawings. For future reference, this book may include notes as to why
prospective interferences were not declared.

In determining whether to initiate an interference, the primary examiner
must decide the question. An administrative patent judge may, however,
be consulted for advice.

The Group Director should be consulted if it is believed that the
circumstances justify an interference between applications neither of
which is ready for allowance.

---SECTION---2301.02 Definitions 

37 CFR 1.601 Scope of rules, definitions.

This subpart governs the procedure in patent interferences in the Patent
and Trademark Office. This subpart shall be construed to secure the
just, speedy, and inexpensive determination of every interference. For
the meaning of terms in the Federal Rules of Evidence as applied to
interferences, see Section  1.671(c). Unless otherwise clear from the
context, the following definitions apply to this subpart:

(a) Additional discovery is discovery to which a party may be entitled
under Section  1.687 in addition to discovery to which the party is
entitled as a matter of right under Section  1.673(a) and (b).

(b) Affidavit means affidavit, declaration under Section  1.68, or
statutory declaration under 28 U.S.C. Section  1746.  A transcript of an
ex parte deposition may be used as an affidavit.

(c) Board means the Board of Patent Appeals and Interferences.

(d) Case-in-chief means that portion of a party's case where the party
has the burden of going forward with evidence.

(e) Case-in-rebuttal means that portion of a party's case where the
party presents evidence in rebuttal to the case-in-chief of another
party.

(f) A count defines the interfering subject matter between two or more
applications or between one or more applications and one or more
patents. At the time the interference is initially declared, a count
should be broad enough to encompass all of the claims that are
patentable over the prior art and designated to correspond to the count. 
When there is more than one count, each count shall define a separate
patentable invention. Any claim of an application or patent that is
designated to correspond to a count is a claim involved in the
interference within the meaning of  35 U.S.C. 135(a).  A claim of a
patent or application that is designated to correspond to a count and is
identical to the count is said to correspond exactly to the count.  A
claim of a patent or application that is designated to correspond to a
count but is not identical to the count is said to correspond
substantially to the count. When a count is broader in scope than all
claims which correspond to the count, the count is a phantom count.

(g) The effective filing date of an application is the filing date of an
earlier application, benefit of which is accorded to the application
under  35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded,
the filing date of the application. The effective filing date of a
patent is the filing date of an earlier application, benefit of which is
accorded to the patent under  35 U.S.C. 119, 120, 121, or 365 or, if no
benefit is accorded, the filing date of the application which issued as
the patent.

(h) In the case of an application, filing date means the filing date
assigned to the application. In the case of a patent, "filing date"
means the filing date assigned to the application which issued as the
patent.

(i) An interference is a proceeding instituted in the Patent and
Trademark Office before the Board to determine any question of
patentability and priority of invention between two or more parties
claiming the same patentable invention. An interference may be declared
between two or more pending applications naming different inventors
when, in the opinion of an examiner, the applications contain claims for
the same patentable invention. An interference may be declared between
one or more pending applications and one or more unexpired patents
naming different inventors when, in the opinion of an examiner, any
application and any unexpired patent contain claims for the same
patentable invention.

(j) 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. 

(k) A lead attorney or agent is a registered attorney or agent of record
who is primarily responsible for prosecuting an interference on behalf
of a party and is the attorney or agent whom an administrative patent
judge may contact to set times and take other action in the
interference.

(l) A party is an applicant or patentee involved in the interference or
a legal representative or an assignee of record in the Patent and
Trademark Office of an applicant or patentee involved in an
interference.  Where acts of a party are normally performed by an
attorney or agent, "party" may be construed to mean the attorney or
agent. An inventor is the individual named as inventor in an application
involved in an interference or the individual named as inventor in a
patent involved in an interference.

(m) A senior party is the party with the earliest effective filing date
as to all counts or, if there is no party with the earliest effective
filing date as to all counts, the party with the earliest filing date. A
junior party is any other party.

(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".

(o) Sworn means sworn or affirmed.

(p) United States means the United States of America, its territories
and possessions.

(q) A final decision is a decision awarding judgment as to all counts.
An interlocutory order is any other action taken by an administrative
patent judge or the Board in an interference, including the notice
declaring an interference.

(r) NAFTA country means NAFTA country as defined in section 2(4) of the
North American Free Trade Agreement Implementation Act, Pub. L. 103-182,
107 Stat. 2060 (19 U.S.C. 3301). 

(s) WTO member country means WTO member country as defined in section
2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat.
4813 (19 U.S.C. 3501).

37 CFR 1.601 defines various terms used in Subpart E of Title 37, Code
of Federal Regulation, including "same patentable invention," "separate
patentable invention," "sworn," "United States," "final decision,"
"interlocutory order," "NAFTA country" and "WTO member country."
"Affidavits" include declarations filed under  35 U.S.C. 25 and  37 CFR
1.68 as well as statutory declarations under  28 U.S.C. 1746. The
definition "United States" is the same as the definition of United
States in  35 U.S.C. 100(c). "NAFTA country" is defined in section 2(4)
of the NAFTA Implementation Act, which includes United States, Mexico
and Canada.  For purposes of  35 U.S.C. 104, inventions made abroad in a
NAFTA country would include only Mexico and Canada.

The definition of "interference" permits an interference between one or
more applications and one or more patents. Thus, the revised rules
follow the policy of Wilson v. Yakel, 1876 C.D. 245 (Comm'r Pat. 1876)
and, to the extent inconsistent therewith, do not follow the policy
announced in Touval v. Newcombe, 194 USPQ 509 (Comm'r Pat. 1976).

A "count" defines interfering subject matter. An interference may have
two counts only if the second count defines a "separate patentable
invention" from the first count. The reason the second count must define
a separate patentable invention is to permit the PTO to lawfully issue
separate patents to different parties in an interference when a single
party does not prevail as to all counts. A "separate patentable
invention" is defined in  37 CFR 1.601(n):

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". 

---SECTION---2302 Ownership of Applications and Patents Involved in an
Interference

37 CFR 1.602 Interest in applications and patents involved in an
interference.

(a) Unless good cause is shown, an interference shall not be declared or
continued between (1) applications owned by a single party or (2)
applications and an unexpired patent owned by a single party.

(b) The parties, within 20 days after an interference is declared, shall
notify the Board of any and all right, title, and interest in any
application or patent involved or relied upon in the interference unless
the right, title, and interest is set forth in the notice declaring the
interference.

(c) If a change of any right, title, and interest in any application or
patent involved or relied upon in the interference occurs after notice
is given declaring the interference and before the time expires for
seeking judicial review of a final decision of the Board, the parties
shall notify the Board of the change within 20 days after the change. 

37 CFR 1.602 continues the previous PTO practice (former  37 CFR
1.201(c)) of not declaring or continuing an interference between (1) two
or more applications owned by the same party or (2) an application and a
patent owned by a single party unless good cause is shown. A corporation
and its wholly owned subsidiary are considered a "single party" within
the meaning of  37 CFR 1.602(a).

COMMON OWNERSHIP

Where applications by different inventive entities but of common
ownership claim the same subject matter or subject matter that is not
patentably different:

(A) Interference therebetween is normally not instituted since there is
no conflict of interest. Elimination of conflicting claims from all
except one application should usually be required.  37 CFR 1.78(c). The
common assignee must determine the application in which the conflicting
claims are properly placed. Treatment by rejection is set forth in MPEP
Section  804.03.

(B) Where an interference with a third party is found to exist, the
commonly owned application having the earliest effective filing date
will be placed in interference with the third party. The common assignee
may move during the interference under  37 CFR 1.633(d) to substitute
the other commonly owned application, if desired.

---SECTION---2303 Interference Between Applications 

37 CFR 1.603 Interference between applications; subject matter of the
interference.

Before an interference is declared between two or more applications, the
examiner must be of the opinion that there is interfering subject matter
claimed in the applications which is patentable to each applicant
subject to a judgment in the interference. The interfering subject
matter shall be defined by one or more counts.  Each application must
contain, or be amended to contain, at least one claim that is patentable
over the prior art and corresponds to each count.  All claims in the
applications which define the same patentable invention as a count shall
be designated to correspond to the count.

Where two or more applications are found to be claiming the same
patentable invention, they may be put in interference, dependent on the
status of the respective applications and the difference between their
filing dates. One of the applications should be in condition for
allowance. Unusual circumstances may justify an exception to this if the
approval of the Group Director is obtained.

Interferences will not be declared between pending applications if there
is a difference of more than 3 months in the effective filing dates of
the oldest and the next oldest applications, in the case of inventions
of a simple character, or a difference of more than 6 months in the
effective filing dates of the applications in other cases, except in
exceptional situations, as determined and approved by the Group
Director. One such exceptional situation would be where one application
has the earliest effective filing date based on foreign priority and the
other application has the earliest effective United States filing date. 
If an interference is to be declared, all applications having the
interfering subject matter should be included.

Before initiating an interference, it is essential that the examiner
make certain that each of the applications contains a claim to the same
patentable invention (as defined in  37 CFR 1.601(n)) and that each of
those claims is clearly readable upon the disclosure of that party and
allowable in its application. See Rowe v. Dror, 112 F.3d 473, 479, 42
USPQ2d 1550, 1554 (Fed. Cir. 1997). Note that the claims of two or more
applications do not have to be identical for an interference to exist.
All that is necessary is that a claim of one applicant be drawn to the
same invention (35 U.S.C. 102) or be obvious (35 U.S.C. 103) in view of
a claim of another applicant. However, if one applicant claims a genus
and the other claims a species within that genus, there is no
interference on the genus if the species is patentable over the genus;
in that case, the genus and species would be separate patentable
inventions. See MPEP Section  2144.08 regarding genus-species
examination guidelines.

If the applications each contain at least one claim drawn to the same
patentable invention (37 CFR 1.601(n)), the examiner proceeds under  37
CFR 1.609 to initiate the interference; otherwise, one or more claims
must be suggested to some or all of the parties. See MPEP Section  2305.
Since two applications do not have to contain an identical claim in
order to be placed in interference, the suggestion of a claim should not
normally be necessary.

---SECTION---2303.01 Interference on Nonelected Subject Matter

Where the subject matter found to be allowable in one application is
disclosed and claimed in another application, but the claims therein to
such subject matter are either nonelected or subject to election, the
question of interference should be considered. The requirement of  37
CFR 1.601(i) that the conflicting applications shall contain claims for
the same patentable invention should be interpreted as meaning generally
that the conflicting claimed subject matter is sufficiently supported in
each application and is patentable to each applicant over the prior art.
The statutory requirement of first inventorship is of transcendent
importance and every effort should be made to avoid the improvident
issuance of a patent where there is an adverse claimant.

Following are illustrative situations where the examiner should take
action toward instituting interference:

(A) Application filed with claims to divisible inventions I and II.
Before action requiring restriction is made, examiner discovers another
application having claims to invention I.

The situation is not altered by the fact that a requirement for
restriction had actually been made but had not been reply to.  Nor is
the situation materially different if an election of noninterfering
subject matter had been made without traverse but no action given on the
merits of the elected invention.

(B) Application filed with claims to divisible inventions I and II and
in reply to a requirement for restriction, applicant traverses the same
and elects invention I. Examiner gives an action on the merits of I.
Examiner subsequently finds an application to another containing allowed
claims to invention II and which is ready for issue.

The situation is not altered by the fact that the election is made
without traverse and the nonelected claims possibly canceled.

(C) Application filed with generic claims and claimed species a, b, c,
d, and e.  Generic claims rejected and election of a single species
required. Applicant elects species a, but continues to urge allowability
of generic claims. Examiner finds another application claiming species b
which is ready for issue.

An interference may be set up even though the generic claims in the
first application are not allowable.

(D) Application filed with generic claims and claims to five species and
other species disclosed but not specifically claimed. Examiner finds
another application the disclosure and claims of which are restricted to
one of the unclaimed species and have been found allowable.

The prosecution of generic claims is taken as indication of an intention
to cover all species disclosed which come under the generic claim.

In all the above situations, the applicant has shown an intention to
claim the subject matter which is actually being claimed in another
application.  These are to be distinguished from situations where a
distinct invention is claimed in one application but merely disclosed in
another application without evidence of an intent to claim the same. The
question of interference should not be considered in the latter
instance. However, if the application disclosing but not claiming the
invention is senior, and the junior application is ready for issue, the
matter should be discussed with the Group Director to determine the
action to be taken.

---SECTION---2304 Applicant Requests Interference Between Applications

37 CFR 1.604 Request for interference between applications by an
applicant.

(a) An applicant may seek to have an interference declared with an
application of another by,

(1) Suggesting a proposed count and presenting at least one claim
corresponding to the proposed count or identifying at least one claim in
its application that corresponds to the proposed count,

(2) Identifying the other application and, if known, a claim in the
other application which corresponds to the proposed count, and

(3) Explaining why an interference should be declared.

(b) When an applicant presents a claim known to the applicant to define
the same patentable invention claimed in a pending application of
another, the applicant shall identify that pending application, unless
the claim is presented in response to a suggestion by the examiner. The
examiner shall notify the Commissioner of any instance where it appears
an applicant may have failed to comply with the provisions of this
paragraph.

See MPEP Section  2309- 2309.02 regarding procedures for preparation of
interference papers by the examiner.

---SECTION---2305 Examiner Suggests Claim to Applicant

37 CFR 1.605 Suggestion of claim to applicant by examiner.

(a) If no claim in an application is drawn to the same patentable
invention claimed in another application or patent, the examiner may
suggest that an applicant present a claim drawn to an invention claimed
in another application or patent for the purpose of an interference with
another application or a patent. The applicant to whom the claim is
suggested shall amend the application by presenting the suggested claim
within a time specified by the examiner, not less than one month.
Failure or refusal of an applicant to timely present the suggested claim
shall be taken without further action as a disclaimer by the applicant
of the invention defined by the suggested claim.  At the time the
suggested claim is presented, the applicant may also call the examiner's
attention to other claims already in the application or presented with
the suggested claim and explain why the other claims would be more
appropriate to be designated to correspond to a count in any
interference which may be declared.

(b) The suggestion of a claim by the examiner for the purpose of an
interference will not stay the period for response to any outstanding
Office action. When a suggested claim is timely presented, ex parte
proceedings in the application will be stayed pending a determination of
whether an interference will be declared.

While the claims of two or more applications may not be identical, if
they are directed to the same patentable invention, as defined in  37
CFR 1.601(n), an interference exists. See MPEP Section  2303. Therefore,
it should be emphasized that it should not be necessary to suggest a
claim to an applicant in most situations. If an applicant is not
claiming the same patentable invention as another applicant, the
examiner, in deciding whether to suggest a claim or claims to the first
applicant, should bear in mind that mere disclosure by an applicant of
an invention which he or she is not claiming does not afford a ground
for suggesting to that applicant a claim for the said invention based
upon claims from another application that is claiming the invention. The
intention of the parties to claim the same patentable invention, as
expressed in the summary of the invention or elsewhere in the disclosure
or in the claims, is an essential to declaring an interference or
suggesting interfering claims in every instance.

The question of what claim or claims to suggest in the interfering
application is one of great importance, and failure to suggest such
claims as will define clearly the matter in issue leads to confusion and
to prolongation of the contest.

Before deciding what claim or claims to suggest to an applicant, the
examiner should decide what the count or counts of the prospective
interference will be, keeping in mind that the count must be patentable
over the prior art and define the parties' common invention (see MPEP
Section  2309 regarding the formation of counts). The claim suggested to
the applicant need not be identical to the prospective count, but rather
should be the broadest claim within the scope of the prospective count
which the applicant's disclosure will support, and which is otherwise
patentable to the applicant. In general, only one claim should be
suggested for each prospective count.

Under  37 CFR 1.605, timely filing of an amendment presenting a claim
suggested by the examiner for purposes of an interference would stay ex
parte proceedings in the application in which the claim is presented
pending a determination by the examiner of whether an interference will
be declared. Also under  37 CFR 1.605(a), when an examiner suggests a
claim, the applicant will be required to copy verbatim the suggested
claim. At the time the suggested claim is copied, however, the applicant
may also (1) call the examiner's attention to other claims already in
the application or which are presented with the copied claim and (2)
explain why the other claims would be more appropriate to be designated
to correspond to a count in any interference which may be declared.

A reply to the examiner's suggestion of a claim is not complete unless
it includes an amendment adding the exact claim suggested to the
application. Even though the applicant may consider the suggested claim
unpatentable, too narrow, or otherwise unsuitable, it must be presented;
otherwise, the invention defined by the suggested claim is considered to
be disclaimed. The applicant must make known any such objections to the
examiner, and may at the same time present other claims, or call the
examiner's attention to other claims already in the application, and
explain why those claims would be more appropriately designated to
correspond to a count in the interference. The examiner may then
determine whether the applicant's alternatively proposed claims are more
appropriate than the claim suggested.

If, in copying a suggested claim, an error is introduced by the
applicant, the examiner should correct the applicant's claim to
correspond to the suggested claim.

It should be noted at this point that if an applicant presents a claim
which allegedly corresponds exactly or substantially to a claim in
another application or patent without suggestion by the examiner,  37
CFR 1.604(b) and  37 CFR 1.607(c) require him or her to identify the
other application or patent. See MPEP Section  2307.05.

If the parties have the same attorney, notification of this fact should
be given to both parties at the time claims are suggested even though
claims are suggested to only one party. Notation of the persons to whom
this letter is mailed should be made on all copies.

The content of Form Paragraph 23.05 is usually added to the letter
suggesting claims where the same attorney or agent is of record in
applications of different ownership which have conflicting subject
matter.

23.05 Same Attorney, Both Applications

Attention is called to the fact that the attorney (or agent) in this
application is also the attorney (or agent) in an application of another
party and of different ownership claiming substantially the same
patentable invention as claimed in the above identified application.

The attention of the Commissioner is not called to the fact that two
conflicting parties have the same attorney until actual interference is
set up and then it is done by notifying the administrative patent judge
as explained in MPEP Section  2309.02.

Form Paragraphs 23.04 and 23.06 may be used to suggest claims for
purposes of interference to applicants.  If the Office action
incorporating these form paragraphs addresses other issues, such as a
rejection of other claims, Form Paragraph 23.07 should be included at
the end of the action.

23.04 Suggestion of Claim

The following allowable claim is suggested for the purpose of an
interference:

[1]

The suggested claim must be copied exactly, although other claims may be
proposed under  37 CFR 1.605(a).

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from
the mailing date of this communication to make the suggested claim. 
Failure to do so will be considered a disclaimer of the subject matter
of this claim under the provisions of  37 CFR 1.605(a), but will not
result in abandonment of this application.  THE PROVISIONS OF  37 CFR
1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.

Claim  [2] considered unpatentable over this suggested claim.

Examiner Note:

1. In bracket 1, insert the suggested claim.

2. In bracket 2, list all claims pending in the application not
considered to be patentably distinct from the suggested claim.

3. Only one claim should be suggested unless claims to separate
patentably distinct inventions are present.  See  37 CFR 1.601(n).  To
suggest an additional claim to a separate distinct invention, form
paragraph 23.06 should follow this paragraph.

4. If the Office action addresses other issues, such as a rejection of
other claims, form paragraph 23.07 should be included at the end of the
action.

23.06 Suggestion of Additional Claim for a Distinct Invention

The following claim is considered allowable and directed to a separate
patentable invention from the claim suggested above:

[1]

The additionally suggested claim must be copied exactly, although other
claims may be proposed under  37 CFR 1.605(a).

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from
the mailing date of this communication to make this additionally
suggested claim.  Failure to do so will be considered a disclaimer of
the subject matter of this claim under the provisions of  37 CFR
1.605(a), but will not result in abandonment of this application.  THE
PROVISIONS OF  37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS
ACTION.

Claim  [2] considered unpatentable over this additionally suggested
claim.

Examiner Note:

This paragraph must be preceded by form paragraph 23.04 and should only
be used to suggest a patentably distinct claim from the one suggested in
form paragraph 23.04.

23.07 Suggestion of Claims - Prosecution Suspended

Applicant need not respond to the remaining issues in this action if a
suggested claim is copied for the purpose of an interference within the
time limit specified above (37 CFR 1.605(b)).

Examiner Note:

This paragraph should be used at the end of any Office action where
claims are suggested using either form paragraph 23.04 or 23.09 and
where additional issues (e.g., a rejection of other claims) are
addressed in the action that will be suspended should applicant copy the
suggested claim.

---SECTION---2305.01 Action To Be Made at Time of Suggesting Claims 

At the same time that the claims are suggested, an action is made on
each of the applications that are up for action by the examiner, whether
they be new or amended applications. In this way, possible motions under 
37 CFR 1.633(c) and (d) may be forestalled. That is, the action on the
new or amended application may bring to light patentable claims that
should be included as corresponding to the count of, or as forming the
basis for, an additional count of the interference, and, on the other
hand, the rejection of unpatentable claims will serve to indicate to the
opposing parties the position of the examiner with respect to such
claims.

When an examiner suggests that an applicant present a claim for
interference, the examiner should state which of the claims already in
the application are, in his or her opinion, unpatentable over the claim
suggested. This statement does not constitute a formal rejection of the
claims, but if the applicant presents the suggested claim but disagrees
with the examiner's statement, the applicant should so state on the
record, not later than the time the claim is presented. In re Bandel,
348 F.2d 563, 146 USPQ 389 (CCPA 1965). If the applicant does not
present the suggested claim by the expiration of the period fixed for
its presentation, the examiner should then reject those claims which
were previously stated as being unpatentable over the suggested claim on
the basis that the failure to present constituted a concession that the
subject matter of those claims is the prior invention of another in this
country under  35 U.S.C. 102(g)  and thus prior art to the applicant
under  35 U.S.C. 103. In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA
1975).  If the applicant does present the suggested claim, when the
interference is declared, the claims stated to be unpatentable over the
suggested claim will be designated as corresponding to the count.

---SECTION---2305.02 Time Limit Set for Presenting Suggested Claims 

Where claims are suggested for interference, a limited period determined
by the examiner, not less than one month, is set for reply.  See MPEP
Section  710.02(c).

Should any one of the applicants fail to present the claim or claims
suggested within the time specified, all claims not patentable thereover
are rejected on the ground that the applicant has disclaimed the
invention to which they are directed. If the applicant presents the
suggested claims later they will be rejected on the same ground.  See
MPEP Section  706.03(u).

---SECTION---2305.03 Suggested Claims Presented After Period for Reply
Running Against Application

If suggested claims are presented within the time specified for making
the claims, the applicant may ignore any outstanding rejections in the
application. Even if claims are suggested in an application near the end
of the period for reply, and the time limit for presenting the claims
extends beyond the end of the period, such claims will be admitted if
filed within the time limit even though outside the period for reply to
the rejection (usually a 3-month shortened statutory period) and even
though no amendment was filed in reply to the Office action outstanding
against the application at the time of suggesting the claims.  No
portion of the application is abandoned provided the applicant presents
the suggested claims within the time specified.  However, if the
suggested claims are not thus presented within the specified time, the
application becomes abandoned in the absence of a reply filed within the
period for reply to the rejection.  37 CFR 1.605(b).

---SECTION---2305.04 Suggestion of Claims, Application in Issue or in
Interference 

An application will not be withdrawn from issue for the purpose of
suggesting claims for an interference.  When an application pending
before the examiner contains one or more claims defining an invention to
which claims may be presented in an application in issue, the examiner
may write a letter suggesting such claims to the applicant whose
application is in issue, stating that if such claims be presented within
a certain specified time, the application will be withdrawn from issue,
the amendment entered and the interference declared. Such letters must
be submitted to the Group Director.  If the suggested claims are not
presented in the application in issue, it may be necessary to withdraw
it from issue for the purpose of rejecting other claims on the implied
disclaimer resulting from the failure to present the suggested claims.

When the examiner suggests one or more claims for the purpose of
interference with an application in issue to an applicant whose
application is pending before him or her, the application in issue will
not be withdrawn for the purpose of interference unless the suggested
claims are presented in the pending application within the time
specified by the examiner.  The letter suggesting claims should be
submitted to the Group Director for approval.

In either of the above cases, the Publishing Division should be notified
when the claims are suggested, so that in case the issue fee is paid
during the time in which the suggested claims may be presented, proper
steps may be taken to prevent the issue fee from being applied.

The examiner should borrow the allowed application from the Publishing
Division and hold the file until the claims are presented or the time
limit expires.  This avoids any possible issuance of the application as
a patent should the issue fee be paid.  To further ensure against
issuance of the application, the examiner may pencil in the blank space
labeled, "Date paid" in the lower right-hand corner of the face of the
file wrapper, the initialed request: "Defer for interference."  The
issue fee is not applied to such an application until the following
procedure is carried out.

When notified that the issue fee has been received, the examiner shall
prepare a memo to the Publishing Division requesting that issue of the
patent be deferred for a period of 3-months due to possible
interference.  This allows a period of 2 months to complete any action
needed. At the end of this 2-month period, the application must either
be released to the Publishing Division or be withdrawn from issue.

When an application is found claiming an invention for which claims are
to be suggested to other applications already involved in interference,
to form another interference, the primary examiner, after obtaining the
consent of the administrative patent judge in charge of the
interference, borrows the last named applications from the Service
Branch of the Board of Patent Appeals and Interferences.  In case the
application is to be added to an existing interference, the primary
examiner need only send the application and form PTO-850 (illustrated in
MPEP Section  2309.02) properly filled out as to the additional
application and identifying the interference, to the administrative
patent judge in charge of the interference who will determine the action
to be taken. Also, see MPEP Section  2342 and Section  2364.01.

23.08 Suggestion of Claims - Application in Issue

This application has been withdrawn from issue for consideration of a
potential interference based on the claims suggested in this action.

Examiner Note:

1. If a conflicting application is in issue, it should be withdrawn
using form paragraphs 10.01 or 10.02 prior to suggesting claims for
interference.

2. Either form paragraph 23.04 or 23.09 must be used in conjunction with
this paragraph.

23.19 Foreign Priority Not Substantiated

Should applicant desire to obtain the benefit of foreign priority under 
35 U.S.C. 119(a)-(d) prior to declaration of an interference, a
translation of the foreign application should be submitted under  37 CFR
1.55 in reply to this action.

Examiner Note:

This paragraph may be used when claims are suggested to applicant from
either an application or a patent and applicant has a claim for
priority, but has not filed a translation of the priority document.

---SECTION---2306 Interference Between an Application and a Patent

37 CFR 1.606 Interference between an application and a patent; subject
matter of the interference.

Before an interference is declared between an application and an
unexpired patent, an examiner must determine that there is interfering
subject matter claimed in the application and the patent which is
patentable to the applicant subject to a judgment in the interference.
The interfering subject matter will be defined by one or more counts.
The application must contain, or be amended to contain, at least one
claim that is patentable over the prior art and corresponds to each
count. The claim in the application need not be, and most often will not
be, identical to a claim in the patent.  All claims in the application
and patent which define the same patentable invention as a count shall
be designated to correspond to the count. At the time an interference is
initially declared (Section  1.611), a count shall not be narrower in
scope than any application claim that is patentable over the prior art
and designated to correspond to the count or any patent claim designated
to correspond to the count. Any single patent claim designated to
correspond to the count will be presumed, subject to a motion under
Section  1.633(c), not to contain separate patentable inventions.

An interference may be declared between an application and a patent if
the application and patent are claiming the same patentable invention,
as defined in  37 CFR 1.601(n), and at least one of the applicant's
claims to that invention are patentable to the applicant.  Since at
least one of the applicant's claims must be patentable, an interference
between an application and a patent cannot be declared if:

(A) The patent is a reference against the application under  35 U.S.C.
102(b)/103;

(B) The applicant's claims are not supported by the application
disclosure, or otherwise do not comply with  35 U.S.C. 112;

(C) The applicant was not claiming the same or substantially the same
invention as claimed in the patent within 1 year after the date on which
the patent was issued (35 U.S.C. 135(b); see also MPEP Section  2307);

(D) The patent is a reference against the application under  35 U.S.C.
102(e)/103, unless the applicant has filed a showing under  37 CFR
1.608.  See MPEP Section  2307.02 concerning the rejection of claims in
an application which correspond to claims of a patent.

Since the claims of a patent may not be altered (except by reissue or
reexamination), the applicant must claim the same patentable invention
as is claimed in one or more claims of a patent in order to provoke an
interference with the patent. The fact that the patent may disclose
subject matter claimed by the applicant is not a basis for interference
if the patent does not claim that subject matter.

The counts of the interference are formulated in essentially the same
manner regardless of whether or not a patent is involved. As stated in 
37 CFR 1.601(f), "each count shall define a separate patentable
invention."  Therefore, instead of having the same number of counts as
copied patent claims, the examiner determines how many separate
patentable inventions are claimed by the applicant and the patentee. 
When the interference is declared, there will be only one count for each
separate patentable invention, with all the claims of the applicant and
of the patentee which claim each invention designated as corresponding
to the count for that invention. See MPEP Section  2309.01 for a more
detailed discussion of the formulation of counts.

An interference between an application and a patent may arise in one of
the following ways:

(A) During examination of an application, the examiner may determine
that the application contains one or more allowable claims which are
drawn to the same invention as claimed in a patent.  In that event, the
examiner may proceed to initiate the interference as described in MPEP
Section  2309.

(B) The examiner may discover a patent having an effective U.S. filing
date later than the effective filing date of an application which claims
an invention which is disclosed by the applicant and to which the
applicant could present patentable claims. In that event, the examiner
should proceed in accordance with MPEP Section  2306.01.

(C) The applicant may provoke an interference with a patent by
presenting a proposed count and either presenting a claim corresponding
to the proposed count, or identifying a claim already in the application
that corresponds to the proposed count.  See  37 CFR 1.607 and MPEP
Section  2307.

It should be emphasized that the requirement that the claims of the
application and of the patent define the same patentable invention in
order for an interference to exist does not mean that the application
claim or claims must necessarily be identical to the corresponding claim
or claims of the patent.  All that is required under present practice is
that a claim of the application be drawn to the same patentable
invention as a claim of the patent.  An application claim is considered
to be drawn to the same patentable invention as a patent claim if it
recites subject matter which is the same as (35 U.S.C. 102) or obvious
in view of (35 U.S.C. 103), the subject matter recited in the patent
claim.  37 CFR 1.601(n).  The test is analogous to that applied for
double patenting; i.e., if the applicant's claim would have been subject
to a double patenting rejection of the "same invention"  or
"obviousness" type (see MPEP Section  804) if the patent and application
were by the same inventive entity, then the application and patent claim
are directed to the same invention. In all cases, the examiner should
keep in mind the fundamental principle that the issuance of two patents
for inventions which are either identical to or not patentably distinct
from each other must be avoided. Aelony v. Arni, 547 F.2d 566, 192 USPQ
486 (CCPA 1977).

37 CFR 1.601(i) includes the possibility that an interference may
include more than one unexpired patent.  The PTO does not have
jurisdiction to determine interferences involving only patents, since 
35 U.S.C. 291 grants that jurisdiction to the courts.  However, if the
examiner discovers two or more patents which are claiming the same
invention as an application, an interference may be instituted between
the application and the patents.  The Group Director's approval must be
obtained before an interference involving multiple patents will be
declared.

PATENT IN DIFFERENT GROUP

When an applicant seeks to provoke an interference with a patent
classified in another group, the propriety of initiating the
interference is decided by and the interference is initiated by the
group where the patent is classified.  In such a case, it may be
necessary to transfer the application, including the drawings,
temporarily to the group which will initiate the interference.

Under  37 CFR 1.606, at the time an interference is declared, a
rebuttable presumption will exist that any patent claim designated to
correspond to a count does not embrace separate patentable inventions.
The presumption is rebuttable and may be challenged and overcome by a
motion under  37 CFR 1.633(c). Moreover, at the time the interference is
declared, no count will be narrower in scope than any application claim
that is patentable over the prior art and designated to correspond to
the count or any patent claim designated to correspond to the count.

---SECTION---2306.01 Patent Has Filing Date Later Than Application

Although a patent which has an effective U.S. filing date later than the
effective filing date of an application is not prior art against that
application, the application should not be issued if the application and
patent contain claims to the same patentable invention. In order to
avoid the issuance of two patents to the same patentable invention, the
examiner should take steps to initiate an interference between the
application and the patent.

If the application contains at least one allowable claim drawn to the
same patentable invention as at least one patent claim, the examiner may
initiate the interference by proceeding as described in MPEP Section 
2309.

If the application discloses, but does not claim, an invention claimed
in the patent, the examiner should suggest a claim or claims to the
applicant (see MPEP Section  2305), and include a statement that failure
of the applicant to make the claim or claims will be taken as a
concession that the subject matter of the claim or claims is the prior
invention of another. Form Paragraphs 23.09 and 23.10 should be used for
this purpose.

23.09 Requirement To Copy Patent Claim

The following claim number [1] from U.S. Patent No. [2] is suggested to
applicant under  35 U.S.C. 135(a) for the purposes of an interference:

[3]

The suggested claim must be copied exactly, although other claims may be
proposed under  37 CFR 1.605(a).

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from
the mailing date of this communication to copy this patent claim. 
Failure to do so will be considered a concession that the subject matter
of this claim is the prior invention of another under  35 U.S.C. 102(g),
and thus also prior art under  35 U.S.C. 103(a) (In re Oguie, 517 F.2d
1382, 186 USPQ 227 (CCPA 1975)), but will not result in the abandonment
of this application.  THE PROVISIONS OF  37 CFR 1.136 DO NOT APPLY TO
THE TIME SPECIFIED IN THIS ACTION.

Examiner Note:

1. In bracket 1, insert the number from the patent of the suggested
claim.

2. In bracket 2, insert the number of the patent.

3. In bracket 3, insert a copy of the patent claim.

4. Only one claim from the patent should be suggested for interference
unless other claims to a separate patentably distinct invention are
claimed in the patent and can be made by the applicant.  To suggest an
additional claim, form paragraph 23.10 should follow this paragraph.

5. If the Office action addresses other issues, such as a rejection of
other claims, form paragraph 23.07 should be included at the end of the
Office action.

23.10 Copying Additional Patent Claims for a Distinct Invention

Claim number [1] from U.S. Patent No.   [2] is suggested under  35
U.S.C. 135(a) in addition to claim   [3] of the patent, suggested above. 
The inventions defined by these patent claims are considered to be
"separate patentable inventions" under  37 CFR 1.601(n) which could form
the basis for plural counts in an interference.

The suggested claim, reproduced below, must be copied exactly, although
other claims may be proposed under  37 CFR 1.605(a).

[4]

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer,  from
the mailing date of this communication to copy this additional patent
claim.  Failure to do so will be considered a concession that the
subject matter of this claim is the prior invention of another under  35
U.S.C. 102(g), and thus also prior art under  35 U.S.C. 103(a) (In re
Oguie, 517 F.2d 1382,186 USPQ 227 (CCPA 1975)).  THE PROVISIONS OF  37
CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION. 

Examiner Note:

1. In bracket 1, insert the number of the patent claim that is
patentably distinct from the claim specified in form paragraph 23.09.

2. This paragraph must follow form paragraph 23.09 and should only be
used in those rare instances where both the patent and the application
claim distinct, interfering inventions.

---SECTION---2307 Applicant Requests Interference With a Patent

37 CFR 1.607 Request by applicant for interference with patent.

(a) An applicant may seek to have an interference declared between an
application and an unexpired patent by,

(1) Identifying the patent,

(2) Presenting a proposed count,

(3) Identifying at least one claim in the patent corresponding to the
proposed count,

(4) Presenting at least one claim corresponding to the proposed count or
identifying at least one claim already pending in its application that
corresponds to the proposed count, and, if any claim of the patent or
application identified as corresponding to the proposed count does not
correspond exactly to the proposed count, explaining why each such claim
corresponds to the proposed count, and

(5) Applying the terms of any application claim,

(i) Identified as corresponding to the count, and

(ii) Not previously in the application to the disclosure of the
application.

(6) Explaining how the requirements of  35 U.S.C. 135(b) are met, if the
claim presented or identified under paragraph (a)(4) of this section was
not present in the application until more than one year after the issue
date of the patent. 

(b) When an applicant seeks an interference with a patent, examination
of the application, including any appeal to the Board, shall be
conducted with special dispatch within the Patent and Trademark Office.
The examiner shall determine whether there is interfering subject matter
claimed in the application and the patent which is patentable to the
applicant subject to a judgment in an interference. If the examiner
determines that there is any interfering subject matter, an interference
will be declared. If the examiner determines that there is no
interfering subject matter, the examiner shall state the reasons why an
interference is not being declared and otherwise act on the application.

(c) When an applicant presents a claim which corresponds exactly or
substantially to a claim of a patent, the applicant shall identify the
patent and the number of the patent claim, unless the claim is presented
in response to a suggestion by the examiner. The examiner shall notify
the Commissioner of any instance where an applicant fails to identify
the patent.

(d) A notice that an applicant is seeking to provoke an interference
with a patent will be placed in the file of the patent and a copy of the
notice will be sent to the patentee. The identity of the applicant will
not be disclosed unless an interference is declared. If a final decision
is made not to declare an interference, a notice to that effect will be
placed in the patent file and will be sent to the patentee.

If the applicant does not apply the terms of the claim presented to the
disclosure of the application, i.e., does not state how each term of the
copied claim is supported by the specification, as required by  37 CFR
1.607(a)(5), a one-month time period should be set for correction of
this deficiency. Form Paragraph 23.12 should be used for this purpose.

COMPLIANCE WITH 35 U.S.C. 135(b)

If the claim presented or identified as corresponding to the proposed
count was added to the application by an amendment filed more than one
year after issuance of the patent, or the application was not filed
until more than one year after issuance of the patent (but the patent is
not a statutory bar), then under the provisions of  35 U.S.C. 135(b), an
interference will not be declared unless at least one of the claims
which were in the application, or a parent application, prior to
expiration of the one-year period was for "substantially the same
subject matter" as at least one of the claims of the patent. Therefore, 
37 CFR 1.607(a)(6) requires that the request for interference with the
patent include an explanation of how the requirements of  35 U.S.C.
135(b) are met. If this explanation is not provided, a one-month time
period should be set for correction of this deficiency.

The explanation under  37 CFR 1.607(a)(6) must be considered by the
examiner to determine whether the "substantially the same subject
matter" requirement of  35 U.S.C. 135(b) has been met. In order for an
application claim to be for "substantially the same subject matter" as a
patent claim, it must contain all the material limitations of the patent
claim. Parks v. Fine, 773 F.2d 1577, 227 USPQ 432 (Fed. Cir. 1985),
modified, 783 F.2d 1036, 228 USPQ 677 (1986). See also Corbett v.
Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977)  ; In re Sitz, 331 F.2d
617, 141 USPQ 505 (CCPA 1964);   Stalego v. Heymes, 263 F.2d 334, 120
USPQ 473 (CCPA 1959); Rieser v. Williams, 255 F.2d 419, 118 USPQ 96
(CCPA 1958);   Emerson v. Beach, 215 F.2d 290, 103 USPQ 45 (CCPA 1955);  
In re Tanke, 213 F.2d 551, 102 USPQ 93 (CCPA 1954);   Andrews v.
Wickenden, 194 F.2d 729, 93 USPQ 27 (CCPA 1952);   In re Frey, 182 F.2d
184, 86 USPQ 99 (CCPA 1950);   Thompson v. Hamilton, 152 F.2d 994, 68
USPQ 161 (CCPA 1946).  The fact that the application claim may be broad
enough to cover the patent claim is not sufficient. In re Frey, 182 F.2d
184, 86 USPQ 99 (CCPA 1950).

If none of the claims which were present in the application, or a parent
application, prior to expiration of the one-year period meets the
"substantially for the same subject matter" test, the claims presented
or identified as corresponding to the proposed count should be rejected
under  35 U.S.C. 135(b). In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632
(Fed. Cir. 1997).

Note that the expression "prior to one year from the date on which the
patent was granted" in  35 U.S.C. 135(b) includes the one-year
anniversary date of the issuance of a patent. Switzer v. Sockman, 333
F.2d 935, 142 USPQ 226 (CCPA 1964).

SPECIAL DISPATCH

Examiners should note that  37 CFR 1.607 requires that examination of an
application in which applicant seeks an interference with a patent
"shall be conducted with special dispatch."

See MPEP Section  708.01.

23.12 Failure To Apply Terms of Proposed Claim to the Disclosure

Claim  [1] of this application has been copied from U.S. Patent No. [2]
for the purpose of an interference.

Applicant has failed to specifically apply each limitation or element of
each of the copied claim(s) to the disclosure of the application.

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, to
specifically apply each limitation or element of each of the copied
claim(s) to the disclosure of the application.  THE PROVISIONS OF  37
CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.

---SECTION---2307.01 Presentation of Claims Corresponding to Patent
Claims Not a Reply to Last Office Action 

The presentation of claims corresponding to claims of a patent when not
suggested by the Office does not constitute a reply to the last Office
action unless the last Office action relied solely on the patent for the
rejection of all the claims rejected in that action.

---SECTION---2307.02 Rejection of Claims Corresponding to Patent Claims

When claims corresponding to claims of a patent are presented, the
application is taken up at once and the examiner must determine whether
the presented claims are unpatentable to the applicant on any ground(s),
e.g., under  35 U.S.C. 102,  35 U.S.C. 103,  35 U.S.C. 112,  35 U.S.C.
135(b), double patenting, etc. If at least one of the presented claims
is not rejectable on any such ground and is claiming the same invention
as at least one claim of the patent, the examiner should proceed to
initiate an interference.

If all of the claims presented are rejectable on any grounds, they
should be so rejected.  The ground of rejection of the claims presented
may or may not be one which would also be applicable to the
corresponding claims in the patent. If the ground of rejection is also
applicable to the corresponding claims in the patent, any letter
including the rejection must have the approval of the Group Director.
See MPEP Section  1003. Examples of grounds of rejection which would not
also be applicable to the patent are double patenting, insufficient
disclosure in the application, a reference whose date is junior to that
of the patent, or a bar under  35 U.S.C. 135(b) (see MPEP Section 
2307).

The examiner should not proceed to initiate an interference where the
examiner is aware of a reference or other ground of unpatentability for
the application claims which correspond to the patent claims, even if
the ground of unpatentability would also be applicable to the patent
claims. Although an applicant may wish to have his or her application
placed in interference with a patent in order to raise a ground of
unpatentability against the patent claims, an interference will not be
initiated unless at least one of the claims in the application which
correspond to the claims of the patent is allowable.

If the patent has a filing date earlier than the application effective
filing date, see MPEP Section  2308.01.

37 CFR 1.607(b) requires that "[w]hen an applicant seeks an interference
with a patent, examination of the application, including any appeal to
the Board, shall be conducted with special dispatch within the Patent
and Trademark Office." Therefore, when all the claims presented are
rejected the examiner sets a time limit for reply, not less than 30
days, and all subsequent actions, including action of the Board on
appeal, are special. Failure to reply or appeal, as the case may be,
within the time fixed, will, in the absence of a satisfactory showing,
be deemed a disclaimer of the invention claimed.

While the time limit for an appeal from the final rejection of a claim
corresponding to a patent claim is usually set under the provisions of 
37 CFR 1.607(b), where the remainder of the application is ready for
final action, it may be advisable to set a shortened statutory period
for the entire application in accordance with  37 CFR 1.134.

There is an important distinction between a limited time for reply under 
37 CFR 1.607(b) and a shortened statutory period under  37 CFR 1.134.
The penalty resulting from failure to reply within the time limit under 
37 CFR 1.607(b) is loss of the claim or claims involved, on the doctrine
of disclaimer, and this is appealable; while failure to reply within the
set statutory period (37 CFR 1.134) results in abandonment of the entire
application.  This is not appealable.

The rejection of claims presented for interference with a patent
sometimes creates a situation where two different periods for reply are
running against the application - one, the statutory period dating from
the last full action on the application; the other, the limited period
set for the reply to the rejection (either first or final) of the
presented claims. This condition should be avoided where possible as by
setting a shortened period for the entire application, but where
unavoidable, it should be emphasized in the examiner's letter.

In this connection it is to be noted that a reply to a rejection or an
appeal from the final rejection of the presented claims will not stay
the running of the regular statutory period if there is an unanswered
Office action in the application at the time of reply or appeal, nor
does such reply or appeal relieve the examiner from the duty of acting
on the application if it is up for action, when reached in its regular
order.

Where an Office action sets a time limit for reply to or appeal from
that action or a portion thereof, the examiner should note at the end of
the letter the date when the time limit period ends and also the date
when the statutory period ends.  See MPEP Section  710.04.

23.13 Rejection of Claim Corresponding to Proposed Count

Claim   [1] of this application has been copied by the applicant from
U.S. Patent No.   [2].  This claim is not patentable to the applicant
because   [3].

An interference cannot be initiated since a prerequisite for
interference under  37 CFR 1.606 is that the claim be patentable to the
applicant subject to a judgement in the interference.

Examiner Note:

This paragraph must be preceded by a rejection of the claim.

23.14 Claims Not Copied Within One Year

Claim  [1] rejected under  35 U.S.C. 135(b) as not being made prior to
one year from the date on which U.S. Patent No. [2] was granted.

23.15 Copied Claims Drawn to Different Invention

Claim [1] of this application is asserted by applicant to correspond to
claim(s) of U.S. Patent No. [2].

The examiner does not consider this claim to be directed to the same
invention as that of U.S. Patent No.   [3] because   [4].  Accordingly,
an interference cannot be initiated based upon this claim.

---SECTION---2307.03 Presentation of Claims for Interference With a
Patent, After Prosecution of Application is Closed

An amendment presenting a claim to provoke an interference in an
application not in issue is usually admitted and promptly acted on. 
However, if the application had been closed to further prosecution as by
final rejection or allowance of all the claims, or by appeal, such
amendment is not entered as a matter of right.

An interference may result when an applicant presents claims to provoke
an interference with a patent which provided the basis for final
rejection. Where this occurs, if the rejection in question has been
appealed, the Board of Patent Appeals and Interferences should be
notified of the withdrawal of this rejection so that the appeal may be
dismissed as to the involved claims.

Where the prosecution of the application is closed and the presented
claims relate to an invention distinct from that claimed in the
application, entry of the amendment may be denied.  See Ex parte Shohan,
48 USPQ 326, 1941 C.D. 1 (Comm'r Pat. 1940). Admission of the amendment
may very properly be denied in a closed application, if prima facie, the
claims are not supported by the applicant's disclosure.  An applicant
may not have recourse to presenting a claim corresponding to a patent
claim which applicant has no right to make as a means to reopen or
prolong the prosecution of his or her application.  See MPEP Section 
714.19.

AFTER NOTICE OF ALLOWANCE

When an amendment which includes one or more claims presented to provoke
an interference with a patent is received after the Notice of Allowance
and the examiner finds one or more of the claims patentable to the
applicant and an interference to exist, the examiner should prepare a
letter, requesting that the application be withdrawn from issue for the
purpose of interference. This letter, which should designate the claims
to be involved, together with the file and the proposed amendments,
should be sent to the Group Director.

When an amendment which includes one or more claims presented to provoke
an interference with a patent is received after Notice of Allowance, and
the examiner finds basis for refusing the interference on any ground,
the examiner should make an oral report to the supervisory primary
examiner of the reasons for refusing the requested interference.
Notification to applicant is made on Form PTOL-271 if the entire
amendment or a portion of the amendment (including all the presented
claims) is refused. Form paragraph 23.01 should be employed to express
the adverse recommendation as to the entry of the presented claims.

23.01 Entry of Claims Disapproved

Entry of claim  [1] disapproved because   [2].  This application will
not be withdrawn from issue.

Examiner Note:

In bracket 2, insert brief statement of basic reasons for disapproval. 
See MPEP Section  2307.03.

---SECTION---2307.04 Presentation of Claims for Interference With a
Patent Involved in a Reexamination Proceeding

An interference will not be declared with a patent which is involved in
a reexamination proceeding except upon specific authorization from the
Office of the Deputy Assistant Commissioner for Patent Policy and
Projects. Claims which would interfere with the patent may be rejected
on any applicable ground, including, if appropriate, the prior art cited
in the reexamination proceeding. See MPEP Section   2307.02. Prosecution
of the application should continue as far as possible, but if the
application is placed in condition for allowance and still contains
claims which interfere with the patent under reexamination, further
action on the application should be suspended until the reexamination
proceeding is terminated. See MPEP Section  2284.

23.16 Patent Claims Undergoing Reexamination

This application contains claims which conflict with the claims of U.S.
Patent No.   [1], now involved in a reexamination proceeding.

Prosecution in this application is SUSPENDED until termination of the
reexamination proceeding.

Applicant should inquire as to the status of this application SIX MONTHS
from the date of this letter.

Examiner Note:

This paragraph should only be used when the application is otherwise in
condition for allowance.

---SECTION---2307.05 Corresponding Patent Claims Not Identified

37 CFR 1.607(c) requires that "[w]hen an applicant presents a claim
which corresponds exactly or substantially to a claim of a patent, the
applicant shall identify the patent and the number of the patent claim,
unless the claim is presented in response to a suggestion by the
examiner."

This requirement of  37 CFR 1.607(c) applies to claims presented in an
application at the time of filing as well as to claims presented in an
amendment to a pending application. If an applicant, attorney, or agent
presents a claim corresponding exactly or substantially to a patent
claim without complying with  37 CFR 1.607(c) the examiner may be led
into making an action different from what would have been made had the
examiner been in possession of all the facts. Therefore, failure to
comply with  37 CFR 1.607, when presenting a claim corresponding to a
patent claim, may result in the issuance of a requirement for
information as to why an identification of the source of the claim was
not made. Also see  37 CFR 10.23(c)(7).

The examiner should require the applicant to supply a full
identification of the copied patent claims by using Form paragraph
23.11.

23.11 Failure To Identify Source of Patent Claims

Claim  [1] of this application [2] apparently been copied from a U.S.
patent without being suggested by the examiner.  The patent number and
the number of the copied claims have not been properly identified. 37
CFR 1.607(c).

Applicant is required to identify the patent and claim numbers and
supply information explaining why a complete identification of the
copied patent claim(s) has not been presented.  Following applicant's
reply to this requirement or the abandonment thereof, this application
will be forwarded by the examiner to the Office of the Assistant
Commissioner for Patents for appropriate review as noted under  37 CFR
1.607(c).

Applicant is given a TIME PERIOD of ONE MONTH or THIRTY DAYS, whichever
is longer, from the mailing date of this communication for reply to
avoid abandonment of this application.

Examiner Note:

1. The primary examiner must refrain from commenting as to the reasons
for applicant's failure to disclose the U. S. patent identification.

2. In bracket 2, insert --has-- or --have--, as appropriate.

After the applicant's reply or abandonment of the application, the
examiner is required to "notify the Commissioner of any instance where
an applicant fails to identify the patent" under  37 CFR 1.607(c). The
examiner's notification should be in the form of a memorandum directed
to the Office of the Deputy Assistant Commissioner for Patent Policy and
Projects.  The memorandum must be accompanied by the application and a
copy of the patent from which the claim(s) was copied.

---SECTION---2307.06 Presentation of Claims for Interference with a
Patent,  Patentee Must Be Notified

When an applicant seeks to provoke an interference with a patent,  37
CFR 1.607(d) requires that the patentee be notified (1) when the attempt
to provoke the interference is first made, and (2) if an interference is
not declared of the final decision not to declare an interference.

This rule provides a patentee with notice as soon as an applicant
attempts to provoke an interference with the patent so that the patentee
can preserve the invention records from the moment the notice is
received until the time, in some instances many years later, when the
interference is ultimately declared between the patentee and the
applicant.

Form paragraphs 23.20 and 23.21 should be used to notify the patentee.

23.20 Notice to Patentee, Interference Sought

[PTO Letterhead]

[1]

You are hereby notified under  37 CFR 1.607(d) that an applicant is
seeking to provoke an interference with your U. S. Patent No.   [2].

The identity of the applicant will not be disclosed unless an
interference is declared. 

If a final decision is made not to declare an interference, a notice to
that effect will be placed in the patent file and will be sent to the
patentee.

If an interference is declared, notice thereof will be made under  37
CFR 1.611.

______________________

[3]

Primary Examiner

Art Unit [4]

(703) [5]

Examiner Note:

1. This form paragraph is printed with the PTO Letterhead.

2. In bracket 1, insert the mailing address of the patentee.

3. In bracket 3, insert the name of the Primary Examiner.

23.21 Notice to Patentee, Interference Not Declared

[PTO Letterhead]

[1]

Notice was communicated to you under  37 CFR 1.607(d) on   [2] that an
applicant was seeking to provoke an interference with your U.S. Patent
No. [3].

A final determination of this issue has resulted in a decision not to
declare an interference.

No inquiries regarding the identity of the applicant will be
entertained.

______________________

[4]

Primary Examiner

Art Unit [5]

(703) [6]

Examiner Note:

1. This form paragraph is printed with the PTO Letterhead.

2. In bracket 1, insert the mailing address of the patentee.

3. In bracket 2, insert the date of mailing of the earlier notice that
claims had been copied from that patent.

4. In bracket 4, insert the name of the Primary Examiner.

It is anticipated that patentees may make inquiries as to the status of
the application after the first notification has been received.  Since
the group having responsibility for the application will be indicated on
the letter and the letter will not contain any information pertaining to
that application, it will be necessary for each examining group to
establish and maintain some type of permanent record. The type of
permanent record is left to the discretion of the group director.  This
permanent record must be independent of the application file and the
patented file in order to provide adequate information for patentee
inquiries relative to nonreceipt of either a second notice or a notice
of declaration of interference either before or after either is mailed
from the Patent and Trademark Office.  Additionally, the permanent
record must associate the appropriate patent number and the application
number.  This record could be a separate group file for  37 CFR 1.607(d)
notices sent to patentees having appropriate identification of the
patent and application.

In summary, a  37 CFR 1.607(d) notice (Form paragraph  23.20) is
prepared by a person in the group having jurisdiction over the
application attempting to provoke an interference with a patent.  The
original is placed of record in the patented file, one copy is sent to
the patentee, and an entry is made in the permanent group record for  37
CFR 1.607(d) notices.  If a final decision is made that no interference
will be declared, a primary examiner will prepare and sign a  37 CFR
1.607(d) notice (Form paragraph 23.21).

The original of this notice is entered of record in the patented file,
one copy is sent to the patentee, and another entry is made in the
permanent record for  37 CFR 1.607(d) notices. If an interference is to
be instituted, the declaration of interference notice will be sent by an
administrative patent judge and no additional form will be sent by the
examiner.

Although the permanent record for  37 CFR 1.607(d) notices includes
identification both of the patent and application, the patentee cannot
and should not be given any information concerning the party or
application attempting to provoke an interference unless and until an
interference is declared.  35 U.S.C. 122.

---SECTION---2308 Interference Between an Application and a Patent;
Prima Facie Showing by Applicant

37 CFR 1.608 Interference between an application and a patent; prima
facie showing by applicant.

(a) When the effective filing date of an application is three months or
less after the effective filing date of a patent, before an interference
will be declared, either the applicant or the applicant's attorney or
agent of record shall file a statement alleging that there is a basis
upon which the applicant is entitled to a judgment relative to the
patentee.

(b) When the effective filing date of an application is more than three
months after the effective filing date of a patent, the applicant,
before an interference will be declared, shall file evidence which may
consist of patents or printed publications, other documents, and one or
more affidavits which demonstrate that applicant is prima facie entitled
to a judgment relative to the patentee and an explanation stating with
particularity the basis upon which the applicant is prima facie entitled
to the judgment. Where the basis upon which an applicant is entitled to
judgment relative to a patentee is priority of invention, the evidence
shall include affidavits by the applicant, if possible, and one or more
corroborating witnesses, supported by documentary evidence, if
available, each setting out a factual description of acts and
circumstances performed or observed by the affiant, which collectively
would prima facie entitle the applicant to judgment on priority with
respect to the effective filing date of the patent. To facilitate
preparation of a record  (Section  1.653(g)) for final hearing, an
applicant should file affidavits on paper which is 21.8 by 27.9 cm. (8
1/2 x 11 inches). The significance of any printed publication or other
document which is self-authenticating within the meaning of Rule 902 of
the Federal Rules of Evidence or Section  1.671(d) and any patent shall
be discussed in an affidavit or the explanation.  Any printed
publication or other document which is not self-authenticating shall be
authenticated and discussed with particularity in an affidavit. Upon a
showing of good cause, an affidavit may be based on information and
belief. If an examiner finds an application to be in condition for
declaration of an interference, the examiner will consider the evidence
and explanation only to the extent of determining whether a basis upon
which the application would be entitled to a judgment relative to the
patentee is alleged and, if a basis is alleged, an interference may be
declared.

Under  37 CFR 1.608,  an applicant seeking to provoke an interference
with a patent is required to submit evidence which demonstrates that the
applicant is prima facie entitled to a judgment relative to the
patentee.  Evidence must be submitted when the effective filing date of
the application is more than 3 months after the effective filing date of
the patent.  The evidence may relate to patentability and need not be
restricted to priority, but if the evidence shows that the claims of the
application are not patentable, the claims in the application will be
rejected. The applicant can file a request for reexamination of the
patent, if applicable.

---SECTION---2308.01 Patent Has Filing Date Earlier Than Application

When an applicant attempts to provoke an interference with a patent, the
examiner must determine the effective filing dates of the application
and of the patent; only the patent's effective United States filing date
will be considered. Any claim of foreign priority by the patentee under 
35 U.S.C. 119 will not be taken into account when determining whether or
not an interference should be declared, in order to be consistent with
the holding in In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966),
that the effective date of a United States patent as a reference is not
affected by the foreign filing date to which the patentee is entitled
under  35 U.S.C. 119.  If the patentee is determined to be entitled to
the benefit of a prior United States application as to claimed subject
matter involved in the interference, that application must be listed on
the PTO-850 form (see MPEP Section  2309).

If the effective filing date of the application is 3 months or less than
3 months after the effective filing date of the patent, the applicant
must submit a statement alleging that there is a basis upon which
applicant is entitled to a judgment relative to the patentee.  37 CFR
1.608(a).  The statement may be made by persons other than the
applicant.  See MPEP Section  715.04.

If the effective filing date of the application is more than 3 months
after the effective filing date of the patent,  37 CFR 1.608(b) requires
that the applicant must file (1) evidence, such as patents, publications
and other documents, and one or more affidavits or declarations which
demonstrate that applicant is prima facie entitled to a judgment
relative to the patentee, and (2) an explanation stating with
particularity the basis upon which the applicant is prima facie entitled
to the judgment.

If an applicant is claiming the same invention as a patent which has an
earlier effective United States filing date but there is not a statutory
bar against the application, and the applicant has not submitted the
items required by  37 CFR 1.608(a) or (b), as appropriate, the
application should be rejected under  35 U.S.C. 102(e)/103.  A statement
should be included in the rejection that the patent cannot be overcome
by an affidavit or declaration under  37 CFR 1.131 but only through
interference proceedings. Note, however,  35 U.S.C. 135(b) and MPEP
Section  2307.  The applicant should also be advised that an affidavit
under  37 CFR 1.608(b) or evidence and an explanation under  37 CFR
1.608(b), as appropriate, must be submitted and it should be stated, if
applicable, that the patentee has been accorded the benefit of an
earlier U.S. application.

If the applicant does not agree he or she is claiming the same invention
as the patent, and files an affidavit under  37 CFR 1.131, the rejection
should be repeated and made final. The rejection should specify what the
count or counts of the interference between the application and the
patent would be. If the applicant still disagrees with the examiner, the
rejection may be appealed to the Board of Patent Appeals and
Interferences, and the question of whether the application and the
reference patent are claiming the same invention may be argued on
appeal, inasmuch as the  37 CFR 1.131 affidavit cannot be considered
unless the applicant is found to be claiming an invention which is
patentably distinct from that claimed in the patent. See In re Clark,
457 F.2d 1004, 173 USPQ 359 (CCPA 1972) and In re Hidy, 303 F.2d 954,
133 USPQ 650 (CCPA 1962).

---SECTION---2308.02 Showing Under 37 CFR 1.608(b) 

The showing under  37 CFR 1.608(b) must be such as to show that the
applicant is prima facie entitled to a judgment relative to the
patentee.  Since  35 U.S.C. 135(a) gives the Board jurisdiction in an
interference proceeding over questions of both priority and
patentability, the  37 CFR 1.608(b) showing need not attempt to show
prior invention by the applicant, but may instead demonstrate that the
applicant would be entitled to a judgment against the patentee on a
ground of unpatentability which does not apply to applicant's claims
(as, for example, that the claims of the patent which will correspond to
the count or counts are unpatentable over prior art or prior public use,
or that the patent does not comply with  35 U.S.C. 112). Note, however,
the last paragraph of this section.

An applicant in preparing affidavits or declarations under  37 CFR
1.608(b) to provoke an interference with a patentee whose effective U.S.
filing date antedates the applicant's by more than 3 months, should have
in mind the provisions of  37 CFR 1.617, and especially the following:

(A) That after these affidavits or declarations are forwarded by the
primary examiner for the declaration of an interference, they will be
examined by an administrative patent judge.

(B) If the affidavits or declarations fail to establish that applicant
would prima facie be entitled to a judgment relative to the patentee, an
order will be issued concurrently with the notice of interference,
requiring applicant to show cause why summary judgment should not be
entered against the applicant.

(C) Additional evidence in response to such order will not be considered
unless justified by a showing under the provisions of  37 CFR 1.617(b). 
If the applicant responds, the applicant must serve the patentee and any
other opponents with a copy of the original showing under  37 CFR
1.608(b) and of the response, and they will be entitled to present their
views with respect thereto (37 CFR 1.617(d)).

(D) All affidavits or declarations submitted must describe acts which
the affiants performed or observed, or circumstances observed, such as
structure used and results of use or test, except on a proper showing as
provided in  37 CFR 1.608(b). Statements of conclusion, for example,
that the invention of the counts was reduced to practice, are generally
considered to be not acceptable.  It should also be kept in mind that
documentary exhibits which are not self-authenticated must be
authenticated and discussed with particularity by an affiant having
direct knowledge of the matters involved. However, it is not necessary
that the exact date of conception or reduction to practice be revealed
in the affidavits, declarations, or exhibits if the affidavits or
declarations aver observation of the necessary acts and facts, including
documentation when available, before the patentee's effective filing
date.  On the other hand, where reliance is placed upon diligence, the
affidavits or declarations and documentation should be precise as to
dates from a date just prior to patentee's effective filing date. The
showing should relate to the essential factors in the determination of
the question of priority of invention as set out in  35 U.S.C. 102(g).

(E) The explanation required by  37 CFR 1.608(b) should be in the nature
of a brief or explanatory remarks accompanying an amendment, and should
set forth the manner in which the requirements of the counts are
satisfied and how the requirements for conception, reduction to
practice, or diligence are met, or otherwise explain the basis on which
the applicant is prima facie entitled to a judgment.

(F) Published decisions of the Court of Appeals for the Federal Circuit,
Court of Customs and Patent Appeals and the Board of Patent
Interferences concerning the quantum of proof required by an applicant
to make out a prima facie showing entitling the applicant to an award of
priority with respect to the filing date of a patent so as to allow the
interference to proceed,  37 CFR 1.617(a), second sentence, include
Schendel v. Curtis, 83 F.3d 1399, 38 USPQ2d 1743 (Fed. Cir. 1996); Hahn
v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989); Wetmore v.
Quick, 536 F.2d 937, 190 USPQ 223 (CCPA 1976); Golota v. Strom, 489 F.2d
1287, 180 USPQ 396 (CCPA 1974); Schwab v. Pittman, 451 F.2d 637, 172
USPQ 69 (CCPA 1971); Kistler v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA
1969); Azar v. Burns, 188 USPQ 601 (Bd. Pat. Int. 1975); Horvitz v.
Pritchard, 182 USPQ 505 (Bd. Pat. Int. 1974); and Murphy v. Eiseman, 166
USPQ 149 (Bd. Pat. Int. 1970).

As noted above, the evaluation of a showing under  37 CFR 1.608(b) is
made by an administrative patent judge. However, when a showing under 
37 CFR 1.608(b) is filed, the examiner must inspect it to determine
whether the applicant is relying upon prior invention or unpatentability
as a basis for the showing. If the applicant alleges prior invention,
the examiner should merely determine that (1) at least one date prior to
the effective filing date of the patent is alleged and (2) the showing
contains at least one affidavit or declaration by a corroborating
witness, i.e., by someone other than a named inventor; if so, the
examiner should proceed to initiate the interference as described in
MPEP Section  2309. If the showing is based on alleged unpatentability
of the patent claim or claims, the examiner should determine whether any
ground of unpatentability alleged is such that it would also apply to
the applicant; for example, if the applicant alleges that the claims of
the patent are statutorily barred by a reference which would also be a
bar to the applicant.  If the examiner finds that an alleged ground of
unpatentability would also apply to the applicant, the interference
should not be initiated and the applicant's claims which are drawn to
the same invention as the claims of the patent should be rejected on
this admission of unpatentability, without regard to the merits of the
matter. Compare Ex parte Grall, 202 USPQ 701 (Bd. App. 1978).  Although
the applicant may wish to contest the question of whether the common
invention is patentable to the patentee, an interference cannot be
declared unless the common invention is patentable to the applicant.
Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976).  If the alleged
unpatentability is based on patents or printed publications, the
applicant may still be able to file a request for reexamination of the
patent under  35 U.S.C. 302.

---SECTION---2309 Initiation of Interference

37 CFR 1.609 Preparation of interference papers by examiner.

When the examiner determines that an interference should be declared,
the examiner shall forward to the Board:

(a) All relevant application and patent files and

(b) A statement identifying:

(1) The proposed count or counts and, if there is more than one count
proposed, explaining why the counts define different patentable
inventions;

(2) The claims of any application or patent which correspond to each
count, explaining why each claim designated as corresponding to a count
is directed to the same patentable invention as the count;

(3) The claims in any application or patent which do not correspond to
each count and explaining why each claim designated as not corresponding
to any count is not directed to the same patentable invention as any
count; and

(4) Whether an applicant or patentee is entitled to the benefit of the
filing date of an earlier application and, if so, sufficient information
to identify the earlier application.

An interference is initiated by the examiner sending to the Board of
Patent Appeals and Interferences the following:

(A) a filled-out "Interference Initial Memorandum" (Form PTO-850) (see
MPEP Section  2309.02);

(B) a statement under  37 CFR 1.609(b) (see MPEP Section  2309.02); and

(C) the files of each of the applications and patents to be involved in
the interference, as well as the files of any U.S. applications or
patents of which a party has been accorded benefit on the Form PTO-850.

---SECTION---2309.01 Formulation of Counts

Before preparing the "Interference Initial Memorandum" (Form PTO-850),
the examiner must determine precisely what the count or counts of the
interference will be.

In formulating the count or counts, the examiner must decide two
interrelated questions: (1) how many counts will there be; and (2) what
will the scope of each count be.  The following principles should be
kept in mind:

(A) Each count must be drawn to a separate patentable invention, that is
to say, the invention defined in each count must not be the same as, or
obvious over, the invention defined in any other count.  However, a
count may properly be included if it is unobvious over another count,
even though the reverse might not be true. For example, a count to a
species and a count to a genus might properly both be included in the
interference if the species is patentable over the genus, even though
the genus might not be patentable, given the species.

It should be emphasized that most interferences will involve only one
count or a very small number of counts, in view of the requirement of
separate patentability.

(B) A count should normally be sufficiently broad as to encompass the
broadest corresponding patentable claim of each of the parties. 
However, a situation may arise where the examiner considers that an
applicant's corresponding claim includes not only the common invention,
but also another invention; in that case, the count should be limited to
the common invention, and may be narrower than the corresponding claim
which recites the additional invention.  Note that  37 CFR 1.606
provides that a count may not initially be narrower in scope than any
patent claim which corresponds to it; this does not preclude later
substitution of a count which is narrower than the patent claim, as a
result of a preliminary motion under  37 CFR 1.633(c).

(C) A count may not be so broad as to be unpatentable over the prior
art. If a count cannot be made sufficiently broad in scope as to embrace
the broadest corresponding patentable claims of the parties without
being unpatentable, that would indicate either that the parties'
corresponding claims are unpatentable or perhaps, if the parties' claims
do not overlap, that they are drawn to two separately patentable
inventions and there is no interference in fact between them.

The following examples illustrate how counts should be formulated. An
administrative patent judge should be consulted in unusual situations
which do not fit any of the examples.

Example 1:

Application A contains patentable claim 1 (engine). Application B
contains patentable claim 8  (engine). If an interference is declared,
there will be one count (engine). Claim 1 of application A and claim 8
of application B would be designated to correspond to the count.

Example 2:

Application C contains patentable claims 1 (engine) and 2 (6-cylinder
engine). Application D contains patentable claim 8 (engine). An engine
and a 6-cylinder engine define the same patentable invention. If an
interference is declared, there will be one count (engine). Claims 1 and
2 of application C and claim 8 of application D would be designated to
correspond to the count.

Example 3:

Application E contains patentable claims 1 (engine), 2 (6-cylinder
engine) and 3 (engine with a platinum piston). Application F contains
patentable claims 11 (engine) and 12 (8-cylinder engine). Claims 1 and 2
of application E and claims 11 and 12 of application F define the same
patentable invention. Claim 3 of application E defines a separate
patentable invention from claims 1 and 2 of application E and claims 11
and 12 of application F. If an interference is declared, there will be
one count (engine). Claims 1 and 2 of application E and claims 11 and 12
of application F would be designated to correspond to the count. Claim 3
of application E would not be designated to correspond to the count.

Example 4:

Application G contains patentable claims 1 (engine), 2 (6-cylinder
engine) and 3 (engine with a platinum piston). Application H contains
patentable claims 11 (engine) and 15 (engine with a platinum piston).
Claims 1 and 2 of application G and claim 11 of application H define the
same patentable invention. Claim 3 of application G and claim 15 of
application H define a separate patentable invention from claims 1 and 2
of application G and claim 11 of application H. If an interference is
declared, there will be two counts: Count 1 (engine) and count 2 (engine
with a platinum piston). Claims 1 and 2 of application G and claim 11 of
application H would be designated to correspond to the Count 1. Claim 3
of application G and claim 15 of application H would be designated to
correspond to Count 2.

Example 5:

Application J contains patentable claims 1 (engine), 2 (combination of
an engine and a carburetor) and 3 (combination of an engine, a
carburetor, and a catalytic converter). Application K contains
patentable claims 31 (engine), 32 (combination of an engine and a
carburetor), and 33 (combination of an engine, a carburetor, and an air
filter). The engine, combination of an engine and carburetor, and
combination of an engine, carburetor, and air filter define the same
patentable invention. The combination of an engine, carburetor, and
catalytic convertor define a separate patentable invention from the
engine. If an interference is declared, there will be one count
(engine). Claims 1 and 2 of application J and claims 31, 32 and 33 of
application K would be designated to correspond to the Count. Claim 3 of
application J would not be designated as corresponding to the count.

Example 6: 

The PTO will continue to follow Waldeck v. Lewis, 120 USPQ 88 (Comm'r
Pat. 1955). Application L contains patentable claims 1 (Markush group of
benzene or toluene), 2  (benzene), and 3 (toluene). Application M
contains patentable claim 11 (benzene). Benzene and toluene define the
same patentable invention. If an interference is declared, there will be
one count (Markush group of benzene or toluene). Claims 1, 2 and 3 of
application L and claim 11 of application M would be designated to
correspond to the count.

Example 7:

Application N contains patentable claim 1 (benzene). Application P
contains patentable claim 11 (xylene). Benzene and xylene define the
same patentable invention. If an interference is declared, there will be
one count (benzene or xylene). Claim 1 of application N and claim 11 of
application P would be designated to correspond to the count.

Example 8:

Application Q contains patentable claims 1 (Markush group of benzene or
chloroform), 2  (benzene), and 3 (chloroform). Application R contains
patentable claim 33 (benzene). If benzene and chloroform define the same
patentable invention and an interference is declared, there will be one
count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of
application Q and claim 33 of application R would be designated to
correspond to the count. If chloroform defines a separate patentable
invention from benzene and an interference is declared, there will be
one count (benzene). Claims 1 and 2 of application Q and claim 33 of
application R would be designated to correspond to the count. Claim 3 of
application Q would not be designated to correspond to the count.

Example 9:

Application S contains patentable claims 1 (Markush group of benzene or
chloroform), 2  (benzene), and 3 (chloroform). Application T contains
patentable claims 11 (Markush group of benzene or chloroform), 12
(benzene), and 13 (chloroform). If benzene and chloroform define the
same patentable invention and an interference is declared, there will be
one count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of
application S and claims 11, 12 and 13 of application T would be
designated to correspond to the count. The PTO will continue to adhere
to Becker v. Patrick, 47 USPQ 314 (Comm'r Pat. 1939). An interference
can have two counts only if one count defines a separate patentable
invention from another count. If chloroform defines a separate
patentable invention from benzene and an interference is declared, there
will be two counts: Count 1 (benzene) and Count 2 (chloroform). Claims 1
and 2 of application S and claims 11 and 12 of application T would be
designated to correspond to Count 1. Claims 1 and 3 of application S and
claims 11 and 13 of application T would be designated to correspond to
Count 2.

Example 10:

Patent A contains claim 1 (engine). Application U contains patentable
claim 11 (engine). If an interference is declared, there will be one
count (engine). Claim 1 of patent A and claim 11 of application U would
be designated to correspond to the count.

Example 11: 

Patent B contains claims 1 (engine) and 2 (6-cylinder engine).
Application V contains patentable claim 8 (engine). An engine and a 
6-cylinder engine define the same patentable invention. If an
interference is declared, there will be one count (engine). Claims 1 and
2 of patent B and claim 8 of application V would be designated to
correspond to the count.

Example 12: 

Patent C contains claims 1 (engine), 2 (6-cylinder engine), and 3
(engine with a platinum piston). Application W contains patentable
claims 11 (engine) and 12 (8-cylinder engine). Claims 1 and 2 of patent
C and claims 11 and 12 of application W define the same patentable
invention. Claim 3 of patent C defines a separate patentable invention
from claims 1 and 2 of patent C and claims 11 and 12 of application W.
If an interference is declared, there will be one count (engine). Claims
1 and 2 of patent C and claims 11 and 12 of application W would be
designated to correspond to the count. Claim 3 of patent C would not be
designated to correspond to the count.

Example 13:

Patent D contains claims 1 (engine), 2 (6-cylinder engine), and 3
(engine with a platinum piston). Application X contains patentable
claims 11 (engine) and 15 (engine with a platinum piston ). Claims 1 and
2 of patent D and claim 11 of application X define the same patentable
invention. Claim 3 of patent D and claim 15 of application X define a
separate patentable invention from claims 1 and 2 of patent D and claims
11 and 12 of application X. If an interference is declared, there will
be two counts. Count 1 (engine) and Count 2 (engine with a platinum
piston). Claims  1 and 2 of patent D and claim 11 of application X would
be designated to correspond to Count 1. Claim 3 of patent D and claim 15
of application X would be designated to correspond to Count 2.

Example 14: 

Patent E contains claim 1 (Markush group of benzene or toluene), 2
(benzene), and 3 (toluene). Application Y contains patentable claim 11
(benzene). Benzene and toluene define the same patentable invention. If
an interference is declared, there will be one count (Markush group of
benzene or toluene). Claims 1, 2 and 3 of patent E and claim 11 of
application Y would be designated to correspond to the count.

Example 15: 

In this example, the claims of patent E and application Y of example 14
are reversed. Patent E contains claim 1 (benzene). Application Y
contains patentable claim 11 (Markush group of benzene or toluene), 12
(benzene), and 13 (toluene). If an interference is declared, the count
will be the same as the count in Example 14 - (Markush group of benzene
or toluene). Claim 1 of patent E and claims 11, 12 and 13 of application
Y would be designated to correspond to the count.

Example 16:

The PTO follows cases such as Case v. CPC International Inc., 730 F.2d
745, 221 USPQ 196 (Fed. Cir. 1984), cert. denied, 105 S. Ct. 233, 224
USPQ 736 (1984); Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977);
and Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), and will
declare interferences where interfering patent and application claims
are mutually exclusive provided the claims define the same patentable
invention. Patent F contains claim 1 (benzene). Application Z contains
patentable claim 11 (xylene). Benzene and xylene define the same
patentable invention. If an interference is declared, there will be one
count (benzene or xylene). Claim 1 of patent F and claim 11 of
application Z would be designated to correspond to the count.

Example 17: 

It will be the practice of the PTO under  37 CFR 1.606 to initially
declare interferences with counts which are identical to or broader than
patent claims which correspond to the counts. A single patent claim will
be presumed, subject to a motion under  37 CFR 1.633(c), not to define
separate patentable inventions. Patent G contains claims 1 (Markush
group of benzene and chloroform), 2 (benzene), and 3 (chloroform).
Application AA contains patentable claim 33 (benzene). If an
interference is declared, initially it will be presumed by the PTO,
subject to a later motion under  37 CFR 1.633(c), that benzene and
chloroform define the same patentable invention.

There will be one count (Markush group of benzene or chloroform). Claims
1, 2 and 3 of patent G and claim 33 of application AA would be
designated to correspond to the count. If a party believes benzene and
chloroform define separate patentable inventions, that party could file
a motion under  37 CFR 1.633(c) to redefine the count and the claims
corresponding to the counts.

Example 18:

Patent H contains claims 1 (Markush group of benzene and chloroform), 2
(benzene), and 3 (chloroform). Application AB contains patentable claims
11 (Markush group of benzene and chloroform), 12 (benzene) and 13
(chloroform). Benzene and chloroform initially would be presumed,
subject to a motion under  37 CFR 1.633(c), to define the same
patentable invention, because they were recited as a Markush group in a
single patent claim. If an interference is declared, there will be one
count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of
patent H and claims 11, 12 and 13 of application AB would be designated
to correspond to the count. If a party believes benzene and chloroform
define separate patentable inventions, the party could move under  37
CFR 1.633(c) to substitute a count (benzene) for (Markush group of
benzene or chloroform) and to add a count (chloroform).

Example 19:

Under  37 CFR 1.606, the PTO follows the practice announced in Ex parte
Card, 1904 C.D. 383 (Comm'r Pat.). Patent J contains claim 1 (method of
mixing, grinding, and heating).

Application AC contains patentable claim 8 (method of mixing and
heating) and does not disclose or claim a grinding step. In the context
of the inventions disclosed in patent J and application AC, a method of
mixing, grinding, and heating is the same patentable invention as a
method of mixing and heating. Under current practice, it would be said
that "grinding" is an "immaterial"  limitation in claim 1 of patent J.
Under  37 CFR 1.606, the fact application AC does not disclose grinding
would not preclude an interference. If an interference is declared,
there will be one count (method of mixing and heating). Claim 1 of
patent J and claim 8 of application AC would be designated to correspond
to the count.

Example 20:

The facts in this example are the same as Example 18. Assume that
applicant AB believes that benzene and chloroform define separate
patentable inventions. Applicant AB would file a motion under  37 CFR
1.633(c)(1) to substitute Count 2 (benzene) for Count 1 (Markush group
of benzene or chloroform) and add Count 3 (chloroform). If the
administrative patent judge grants the motion, the interference would be
redeclared by deleting Count 1 and substituting in its place Counts 2
and 3. Claims 1 and 2 of the patent H and claims 11 and 12 of
application AB will be designated to correspond to Count 2. Claims 1 and
3 of patent H and claims 11 and 13 of application AB will be designated
to correspond to Count 3. If one party proves priority with respect to
both benzene and chloroform, that party would be entitled to all claims
in its application or patent corresponding to Counts 2 and 3. The other
party would not be entitled to a patent containing any claim
corresponding to Counts 2 and 3. If patentee H proves priority with
respect to benzene and applicant AB proves priority with respect to
chloroform (assuming there was no issue raised at final hearing with
respect to the patentable distinctness of benzene and chloroform), the
judgment will provide that patentee H is not entitled to a patent with
claims 1 and 3,  but is entitled to a patent with claim 2 and that
applicant AB is not entitled to a patent with claims 11 and 12, but is
entitled to a patent with claim 13. If an issue is properly raised at
final hearing as to whether benzene and chloroform are the same
patentable invention and the Board holds that they are the same
patentable invention, the party proving the earliest priority as to
either benzene or chloroform would prevail as to all claims. Thus, if
patentee H invented benzene before applicant AB invented benzene or
chloroform, patentee H would be entitled to a patent containing claims 1
through 3 even if applicant AB invented chloroform before patentee H
invented chloroform. Applicant AB would not be entitled to a patent with
claims 11 through 13.

---SECTION---2309.02 Preparation of Papers

INTERFERENCE INITIAL MEMORANDUM

The "Interference Initial Memorandum" (Form PTO - 850) prepared by the
examiner and addressed to the Board, provides authorization for
preparation of the declaration notices, which are prepared in the
Service Branch of the Board.

If the proposed interference will involve a patent, the examiner should
first determine whether the maintenance fees have been paid, by using
the patent number with PALM Intranet, PALM screen 2970, or contacting
the PTO Status and Entity Division.  See MPEP Section  1730.  If fees
are due and they have not been paid, the interference cannot be declared
since it would involve an expired patent (35 U.S.C. 135(a);  37 CFR
1.606).

A sample of a filled-out Form PTO-850 is shown below.

A separate form is used for each count of the interference. The form
need not be typed. If the count is identical to a claim of one of the
parties, the number of that claim is circled. If the count is not
identical to any claim of any of the parties, the count should be typed
on a plain sheet and attached to the form.

The files to be included in the interference should be listed by last
name (of the first listed inventor if application is joint), application
number, filing date, and, if applicable, patent number and issue date.

The sequence in which the parties are listed on the form is completely
immaterial. If the examiner has determined that a party is entitled to
the benefit of the filing date of one or more applications (or patents)
as to the counts, the blanks provided on the form for indicating this
fact should be filled in as to all such applications. It is particularly
important to list all intermediate applications necessary to provide
continuity of pendency to the earliest benefit application to which a
party is entitled.

An applicant will be accorded the benefit of a foreign application on
the Form PTO-850 and the declaration notices only if the papers required
by  37 CFR 1.55, including a translation, have been filed and the
primary examiner has determined that the applicant is in fact entitled
to the benefit of such application. A patentee may be accorded the
benefit of the filing date of a foreign application in the notice of
interference provided he or she has complied with the requirements of 
37 CFR 1.55, has filed a translation, and the primary examiner has
determined that at least one species within the count involved in the
interference is supported by the disclosure of the foreign application.
Note, however, that a patentee should not be accorded the benefit of a
foreign application if an application in the interference has an
effective filing date subsequent to the filing date of the foreign
application. See MPEP Section  2308.01.

All claims in each party's application or patent must be listed in the
spaces provided on the form as either corresponding or not corresponding
to the count. A claim corresponds to a count if, considering the count
as prior art, the claim would be unpatentable over the count under  35
U.S.C. 102 or  35 U.S.C. 103. If the examiner is in doubt as to whether
a party's claim does or does not correspond to a count, it should be
listed as corresponding to the count. If the party disagrees with this
listing, a motion may be filed under  37 CFR 1.633(c)(4) during the
interference to designate the claim as not corresponding to the count.

Note that for each count, every claim in a party's application or patent
must be designated as either corresponding or not corresponding to the
count; this includes any claims of the application which may be under
rejection. For every claim of an application which is listed on the
form, the examiner must indicate whether or not that claim is allowable
by writing its number in either the "patented or patentable pending
claims" box or the "unpatentable pending claims" box on the form. All
patent claims and at least one of the application claims designated as
corresponding to the count must be listed in the "patented or patentable
pending claims" box.

If an involved application or patent contains multiple dependent claims,
the examiner should be careful to indicate which embodiments of each
multiple dependent claim correspond or do not correspond to each count.
An embodiment of a multiple dependent claim should not be circled on
form PTO-850 as being the count, but rather, the embodiment should be
written out in independent form in the space provided.

After Form PTO-850 is filled out for each count of the proposed
interference, it must be signed by the primary examiner in the space
provided. The form must also be signed by the Group Director, if the
Director's approval is required (as when the interference involves two
applications whose effective filing dates are more than 6 months apart).

STATEMENT UNDER 37 CFR 1.609(b)

In addition to filling out Form PTO-850, the examiner must attach to the
form a statement under  37 CFR 1.609(b). This statement must contain the
following:

(A) For each claim of each of the involved applications or patents which
is designated as corresponding to a count (except for a claim which is
identical to the count), an explanation of why that claim is directed to
the same patentable invention (37 CFR 1.601(n)) as the count. In other
words, for each such claim the examiner must explain why it would be the
same invention as (35 U.S.C. 102), or obvious over (35 U.S.C. 103), the
count. Explanations of obviousness should where possible be supported by
evidence in the form of patents or publications, copies of which should
be attached to the statement.

(B) For each claim of each of the involved applications or patents which
is designated as not corresponding to the count, an explanation of why
that claim defines a different patentable invention from the count,
i.e., why it is not directed to the same patentable invention (37 CFR
1.601(n)) as the count.

(C) If there is more than one proposed count, an explanation of why each
proposed count defines a different patentable invention, i.e., is not
directed to the same patentable invention (37 CFR 1.601(n)), as the
other count or counts.

Statements explaining the designation of claims as corresponding or not
corresponding to the count, or why a count defines a separate patentable
invention, should be supported by reference to prior art of record
whenever possible. A copy of any prior art cited in the statement should
be attached. Some examples of explanations of the designation of claims
as corresponding or not corresponding to the count appear below.

Example 1:

Claim 1 is directed to a reactor, and is identical to the count.
Dependent claim 2, drawn to a liner, is designated as not corresponding
to the count. Dependent claims 3 to 7 are designated as corresponding to
the count. A possible statement explaining the designations of claims 2
to 7 as corresponding or not corresponding to the count is:

"Claim 2 does not correspond to the count because the liner recited
therein has a composition not previously known and nonobvious in the
art.

"Claims 3-7 are designated to correspond to the count because they
recite features that are conventionally used and would have been obvious
in the general class of reactors recited in claim 1 (see the Watson et
al. reference which shows that the riser 44, separator 56, and catalyst
member 34 are conventionally used in the type of reactor recited in
claim 1)."

Note:

1. No explanation is required for claim 1, since it is identical to the
count.

2. Attach a copy of the cited reference to the statement.

Example 2:

Claim 1, which is identical to the count, recites a combination of
features A-F (an internal combustion engine), wherein all features
except feature B (a catalytic element) are conventional. Feature B (the
catalytic element) renders the claim patentable. Feature C is a filter.
Claims 2-3 are dependent from claim 1 and further define feature C (the
filter). A possible statement explaining the designation of claims 2-3
as corresponding to the count is:

"Claims 2-3 are designated to correspond to the count because they
further define the filter recited in claim 1 as containing apertures
ranging from 0.5-0.10 microns. In view of the disclosure of a filter
having this aperture size in Figure 3 of Englewood, its use in the
internal combustion engine of claim 1 would have been obvious."

Note: See Example 1 Notes.

Example 3

The count is drawn to composition "A or B". Independent claim 10 recites
composition A, in which radical R is defined as a lower alkyl. Claim 15,
dependent from claim 10, recites that R is methyl. A possible statement
explaining the designation of claims 10 and 15 as corresponding to the
count would be:

"Claim 10 is designated as corresponding to the count because it recites
one of the two alternative compositions recited in the count.

"Claim 15 is designated to correspond to the count because methyl is a
species of the lower alkyl genus of composition A, and thus obvious over
the genus. Applicant has shown no evidence that the substitution of
methyl in the lower alkyl group would provide any unexpected results."

FORWARDING OF PAPERS

After the PTO-850 form or forms are signed, they are forwarded to the
Board together with the statement under  37 CFR 1.609(b) and the file of
each U.S. application or patent listed on the form(s), including all
U.S. applications or patents of which benefit is being accorded. The
examiner should keep a copy of the form or forms and all attachments for
his/her records.

If two of the parties have the same attorney or agent, the examiner will
in a separate memorandum call the attention of the Board to that fact
when the Interference Initial Memorandum is forwarded. The
administrative patent judge, when the interference is declared, can then
take such action as may be appropriate under  37 CFR 1.613(b).

Form PTO-850. Interference Initial Memorandum[GRAPHIC]

---SECTION---2309.03 Affidavits and Declarations Retained in File 

When there are of record in the file of the application affidavits or
declarations under 37 CFR 1.131 or 1.608, they should not be sealed but
should be left in the file for consideration by the Board.  If the
interference proceeds normally, these affidavits or declarations will be
removed and sealed up by the Service Branch of the Board and retained
with the interference.

Affidavits and declarations under  37 CFR 1.131 and 1.608 are available
for inspection by an opposing party to an interference after the
preliminary motions under  37 CFR 1.633 are decided.  See  37 CFR
1.612(b).

Affidavits or declarations in the file of a patent are not removed,
inasmuch as they have been available to the public since the date the
patent issued.

---SECTION---2309.05 Consultation With Administrative Patent Judge

The examiner should consult with one of the administrative patent judges
in any case of doubt or where the practice appears to be obscure or
confused.  In view of their specialized experience they may be able to
suggest a course of action which will avoid considerable difficulty in
the future treatment of the application.

---SECTION---2309.06 Interfering Subject Matter in "Secrecy Order" Cases

37 CFR 5.3 Prosecution of application under secrecy order; withholding
patent.

                  +++    

(b) An interference will not be declared involving national applications
under secrecy order. However, if an applicant whose application is under
secrecy order seeks to provoke an interference with an issued patent, a
notice of that fact will be placed in the file wrapper of the patent.
(See Section  1.607(d)).

                  +++    

Since declaration of an interference gives immediate access to
applications by opposing parties, no interference will be declared
involving an application which has a secrecy order therein. See MPEP
Section  120 and Section  130. Claims will be suggested, if necessary,
so that all parties will be claiming the same patentable invention. See
MPEP Section  2303 -  Section  2305.04. When each application contains
at least one claim to the same patentable invention, the following
letter will be sent to all parties:

Claims 1, 2, etc. (including the conflicting claims and claims not
patentable over the application under secrecy order) conflict with those
of another application. However, the secrecy order (of the other
application/of your application) does not permit the declaration of an
interference. Accordingly, action on the application is suspended for so
long as this situation continues.

   Upon removal of the secrecy order and markings, if applicable, from
all applications, an interference will be declared.

The letter should also indicate the allowability of the remaining
claims, if any.

A notice that claims have been presented in an application under secrecy
order for the purpose of interference with a patent should be placed in
the patented file.  Also, in accordance with  37 CFR 1.607(d), the
patentee should be notified. See MPEP Section  2307.06. The question of
an interference is taken up upon termination of the secrecy order in the
application in which patent claims are presented. The suggested notices
should be modified accordingly.

The notices should be signed by the primary examiner. The copy of the
notice retained separately in the examining group should, in addition,
contain the identification of the applications and patents involved and
the interfering claims.

---SECTION---2311 Declaration of Interference 

37 CFR 1.611 Declaration of interference.

(a) Notice of declaration of an interference will be sent to each party.

(b) When a notice of declaration is returned to the Patent and Trademark
Office undelivered, or in any other circumstance where appropriate, an
administrative patent judge may send a copy of the notice to a patentee
named in a patent involved in an interference or the patentee's assignee
of record in the Patent and Trademark Office or order publication of an
appropriate notice in the Official Gazette.

(c) The notice of declaration shall specify:

(1) The name and residence of each party involved in the interference;

(2) The name and address of record of any attorney or agent of record in
any application or patent involved in the interference;

(3) The name of any assignee of record in the Patent and Trademark
Office;

(4) The identity of any application or patent involved in the
interference;

(5) Where a party is accorded the benefit of the filing date of an
earlier application, the identity of the earlier application;

(6) The count or counts and, if there is more than one count, the
examiner's explanation why the counts define different patentable
inventions;

(7) The claim or claims of any application or any patent which
correspond to each count;

(8) The examiner's explanation as to why each claim designated as
corresponding to a count is directed to the same patentable invention as
the count and why each claim designated as not corresponding to any
count is not directed to the same patentable invention as any count; and

(9) The order of the parties.

(d) The notice of declaration may also specify the time for:

(1) Filing a preliminary statement as provided in Section  1.621(a);

(2) Serving notice that a preliminary statement has been filed as
provided in Section  1.621(b); and

(3) Filing preliminary motions authorized by Section  1.633.

(e) Notice may be given in the Official Gazette that an interference has
been declared involving a patent.

Upon receipt of the Interference Initial Memorandum (Form PTO-850) and
the application(s) and any patent files from the primary examiner, the
interference is assigned to an administrative patent judge, who is
thereafter responsible for handling it during its pendency before the
PTO. Under the current rules, the administrative patent judge has wide
discretion as to what actions he or she may take, particularly with
regard to the setting of times, and in studying the rules it will be
noted that many of their provisions are modified by a qualification such
as "unless otherwise ordered by an administrative patent judge."
Therefore, it may well be that different administrative patent judges
will follow somewhat different procedures in the interferences assigned
to them.

The papers necessary in declaring an interference are prepared at the
Board.  The notices to the parties and the declaration sheet are signed
by the administrative patent judge, who declares the interference by
mailing the notices to the several parties to the proceeding. Thereafter
the application, patent, and interference files are kept at the Board
where they are also recorded in a card index.

Once an interference is declared involving an application, ex parte
prosecution of the application is suspended, and the applicant need not
reply to any PTO action outstanding as of the date the interference is
declared.

---SECTION---2312 Public Access to Files

37 CFR 1.11 Files open to the public.

                  +++    

(e) The file of any interference involving a patent, a statutory
invention registration, a reissue application, or an application on
which a patent has been issued or which has been published as a
statutory invention registration, is open to inspection by the public,
and copies may be obtained upon paying the fee therefor, if:

(1) The interference has terminated or

(2) An award of priority or judgment has been entered as to all parties
and all counts.

During the pendency of an interference, the public is entitled to access
to the file of any patent, reissue application, or statutory invention
registration involved in the proceeding. However, such access does not
also entitle members of the public to access to the interference file,
or to the file of a non-reissue application involved in the
interference. The extent to which members of the public may be granted
access to the file of an involved application is governed by the
provisions of  37 CFR 1.14(a)(3). See MPEP Section  103.

Once the Board enters judgment in the interference as to all parties and
all counts, the interference file becomes accessible to the public if a
patent, statutory invention registration, or reissue application was
involved in the interference. If not, the interference file is not open
to the public until one of the involved applications issues as a patent
or is published as a statutory invention registration. Note that even
though an interference file may be open to the public, access to the
file of an application which is or was involved in the proceeding is
still subject to the provisions of  37 CFR 1.14.

---SECTION---2314 Jurisdiction Over Interference

37 CFR 1.614 Jurisdiction over interference.

(a) The Board acquires jurisdiction over an interference when the
interference is declared under Section  1.611.

(b) When the interference is declared the interference is a contested
case within the meaning of  35 U.S.C. 24.

(c) The examiner shall have jurisdiction over any pending application
until the interference is declared.  An administrative patent judge may
for a limited purpose restore jurisdiction to the examiner over any
application involved in the interference.

37 CFR 1.614 specifies when the Board gains jurisdiction over an
interference. The section also indicates when an interference becomes a
contested case within the meaning of  35 U.S.C. 24.  A remand to the
examiner is authorized and may be useful in certain situations, such as
when a party moves under  37 CFR 1.633(c) to add a proposed count which
is broader than any count in an interference. Alternatively, an
administrative patent judge can obtain informal opinions from examiners
during the course of an interference.  Nothing in the rules, however, is
intended to authorize informal conferences between an administrative
patent judge and an examiner with respect to the merits of an
application before the Board in an   ex parte appeal from an adverse
decision of the examiner.

Where an interference is declared, all questions involved therein are to
be determined inter partes. This includes not only the question of
priority of invention but all questions relative to the patentability to
each of the parties of the claims in issue or of any claim suggested to
be added to the issue.

Examiners are admonished that inter partes questions should not be
discussed ex parte with any of the interested parties and that they
should so inform applicants or their attorneys if any attempt is made to
discuss ex parte these inter parte questions.

The interference is declared when the administrative patent judge mails
the notices of interference to the parties.  The interference is thus
technically pending before the Board of Patent Appeals and Interferences
from the date on which the notices are mailed, and from that date the
files of the various applications set out in the notices are opened to
inspection by the other parties to the extent provided in  37 CFR 1.612.

Obvious errors on the Form PTO-850 or its attachments may be corrected
by the administrative patent judge before the declaration notices are
mailed.  The changes will be made in red ink and initialled in the
margin by the administrative patent judge.

Throughout the interference, the interference and application files
involved are in the keeping of the Service Branch of the Board except at
such times that action is required, such as for concurrent prosecution,
when they are temporarily in possession of the tribunal before whom the
particular question is pending.

If, independent of the interference, action as to one or more of the
involved cases becomes necessary, the examiner should consult the
administrative patent judge in charge of the interference.

After obtaining the administrative patent judge's consent, the examiner
merely borrows the file, if needed, as where a patent is to be involved
in a new interference. See MPEP Section  2342 and Section  2364.01.

---SECTION---2315 Suspension of Ex Parte Prosecution 

37 CFR 1.615 Suspension of ex parte prosecution.

(a) When an interference is declared, ex parte prosecution of an
application involved in the interference is suspended. Amendments and
other papers related to the application received during pendency of the
interference will not be entered or considered in the interference
without the consent of an administrative patent judge.

(b) Ex parte prosecution as to specified matters may be continued
concurrently with the interference with the consent of the
administrative patent judge.

Under  37 CFR 1.615, upon declaration of an interference, ex parte
prosecution of an application involved in the interference is suspended
and any outstanding Office actions are considered as withdrawn by
operation of the rule. Ex parte Peterson, 49 USPQ 119, 1941 C.D. 8
(Comm'r Pat. 1941). Upon termination of the interference, the examiner
will reinstate the action treated as withdrawn by operation of  37 CFR
1.615 and set a shortened statutory period for reply.

The treatment of amendments filed during an interference is considered
in detail in MPEP Section  2364 -  Section  2364.01.

Ex parte prosecution of an appeal under  37 CFR 1.191 may proceed
concurrently with an interference proceeding involving the same
application with the consent of the administrative patent judge provided
the primary examiner who forwards the appeal certifies, in a memorandum
to be placed in the file, that the subject matter of the interference
does not conflict with the subject matter of the appealed claims. The
approval of the administrative patent judge in charge of the
interference must be obtained before undertaking any concurrent
prosecution of the application.

---SECTION---2315.01 Suspension - Overlapping Applications

Where one of several applications of the same inventor or assignee which
contain overlapping claims gets into an interference, the prosecution of
all the cases not in the interference should be carried as far as
possible, by treating as prior art the counts of the interference for
the purpose of making provisional rejections and by insisting on proper
lines of division or distinction between the applications. In some
instances, suspension of action by the Office cannot be avoided. See
MPEP Section  709.01.

Where an application involved in an interference includes, in addition
to the subject matter of the interference, a separate and divisible
invention, prosecution of the second invention may be had during the
pendency of the interference by filing a divisional application for the
second invention or by filing a divisional application for the subject
matter of the interference and moving to substitute the latter
divisional application for the application originally involved in the
interference.  However, the application for the second invention may not
be passed to issue if it contains claims broad enough to dominate matter
claimed in the application involved in the interference.

23.17 Rejection Based on Count of an Interference

The rejection of claim  [1] above based upon count   [2] of Interference
No. [3], to which applicant is a party, is a provisional rejection for
the purpose of resolving all remaining issues in this application.  The
provisional assumption that the count is prior art under  35 U.S.C.
102(g) against this application may or may not be true, and the
prosecution in this case will be suspended pending final determination
of priority in the interference if and when no other issues remain.

Examiner Note:

1. This paragraph must follow all rejections under  35 U.S.C. 102 or 103
using the count of the interference as prior art.

2. This paragraph is applicable only to an application which is commonly
owned by a party in the interference but is not involved in the
interference.

23.18 Suspension of Prosecution Pending Outcome of Interference

The outcome of Interference No. [1] has a material bearing on the
patentability of the claims in this application.  Prosecution in this
application is SUSPENDED pending a final judgment in the interference.

Applicant should call this case up for action upon termination of the
interference.

Examiner Note:

This paragraph should only be used in an application that is not in the
interference but is commonly owned by one of the parties thereto.

---SECTION---2333 Preliminary Motions - Related to Application Not
Involved in Interference 

Whenever a party in interference brings a motion under  37 CFR 1.633(d)
or (e) concerning an application not already included in the
interference, the administrative patent judge will normally send the
primary examiner a written notice of such motion and the primary
examiner should place this notice in said application file.

The notice is customarily sent to the examining group which declared the
interference since the application referred to in the motion is
generally examined in the same group. However, if the application is not
being examined in the same group, then the correct examining group
should be ascertained and the notice forwarded to that group.

This notice serves useful and essential purposes, and due attention must
be given to it by the examiner when it is received.  First, the examiner
is cautioned by this notice not to consider ex parte, questions which
are pending before the Office in inter partes proceedings involving the
same applicant or party in interest. Second, if the application which is
the subject of the motion is in issue and the last date for paying the
issue fee will not permit determination of the motion, it will be
necessary to withdraw the application from issue.  Third, if the
application contains an affidavit or declaration under  37 CFR 1.131 or
1.608, this must be sealed because the opposing parties have access to
the application.

---SECTION---2340 Motions, Hearing and Decision 

37 CFR 1.640 Motions, hearing and decision, redeclaration of
interference, order to show cause.

(a) A hearing on a motion may be held in the discretion of the
administrative patent judge. The administrative patent judge shall set
the date and time for any hearing. The length of oral argument at a
hearing on a motion is a matter within the discretion of the
administrative patent judge. An administrative patent judge may direct
that a hearing take place by telephone.

(b) Unless an administrative patent judge or the Board is of the opinion
that an earlier decision on a preliminary motion would materially
advance the resolution of the interference, decision on a preliminary
motion shall be deferred to final hearing. Motions not deferred to final
hearing will be decided by an administrative patent judge. An
administrative patent judge may consult with an examiner in deciding
motions. An administrative patent judge may take up motions for
decisions in any order, may grant, deny, or dismiss any motion, and may
take such other action which will secure the just, speedy, and
inexpensive determination of the interference. A matter raised by a
party in support of or in opposition to a motion that is deferred to
final hearing will not be entitled to consideration at final hearing
unless the matter is raised in the party's brief at final hearing. If
the administrative patent judge determines that the interference shall
proceed to final hearing on the issue of priority or derivation, a time
shall be set for each party to file a paper identifying any decisions on
motions or on matters raised sua sponte by the administrative patent
judge that the party wishes to have reviewed at final hearing as well as
identifying any deferred motions that the party wishes to have
considered at final hearing. Any evidence that a party wishes to have
considered with respect to the decisions and deferred motions identified
by the party or by an opponent for consideration or review at final
hearing shall be filed or, if appropriate, noticed under Section 
1.671(e) during the testimony-in-chief period of the party. 

(1) When appropriate after the time expires for filing replies to
oppositions to preliminary motions, the administrative patent judge will
set a time for filing any amendment to an application involved in the
interference and for filing a supplemental preliminary statement as to
any new counts which may become involved in the interference if a
preliminary motion to amend or substitute a count has been filed.
Failure or refusal of a party to timely present an amendment required by
an administrative patent judge shall be taken without further action as
a disclaimer by that party of the invention involved. A supplemental
preliminary statement shall meet the requirements specified in Section 
1.623, 1.624, 1.625, or 1.626, but need not be filed if a party states
that it intends to rely on a preliminary statement previously filed
under Section  1.621(a). At an appropriate time in the interference, and
when necessary, an order will be entered redeclaring the interference.

(2) After the time expires for filing preliminary motions, a further
preliminary motion under Section  1.633 will not be considered except as
provided by Section  1.645(b).

(c) When a decision on any motion under Section Section  1.633, 1.634,
or 1.635 or on any matter raised sua sponte by an administrative patent
judge is entered which does not result in the issuance of an order to
show cause under paragraph (d) of this section, a party may file a
request for reconsideration within 14 days after the date of the
decision. The request for reconsideration shall be filed and served by
hand or Express Mail. The filing of a request for reconsideration will
not stay any time period set by the decision. The request for
reconsideration shall specify with particularity the points believed to
have been misapprehended or overlooked in rendering the decision. No
opposition to a request for reconsideration shall be filed unless
requested by an administrative patent judge or the Board. A decision
ordinarily will not be modified unless an opposition has been requested
by an administrative patent judge or the Board. The request for
reconsideration normally will be acted on by the administrative patent
judge or the panel of the Board which issued the decision.

(d) An administrative patent judge may issue an order to show cause why
judgment should not be entered against a party when:

(1) A decision on a motion or on a matter raised sua sponte by an
administrative patent judge is entered which is dispositive of the
interference against the party as to any count;

(2) The party is a junior party who fails to file a preliminary
statement; or

(3) The party is a junior party whose preliminary statement fails to
overcome the effective filing date of another party.

(e) When an order to show cause is issued under paragraph (d) of this
section, the Board shall enter judgment in accordance with the order
unless, within 20 days after the date of the order, the party against
whom the order issued files a paper which shows good cause why judgment
should not be entered in accordance with the order. 

(1) If the order was issued under paragraph (d)(1) of this section, the
paper may:

(i) Request that final hearing be set to review any decision which is
the basis for the order as well as any other decision of the
administrative patent judge that the party wishes to have reviewed by
the Board at final hearing or

(ii) Fully explain why judgment should not be entered.

(2) Any opponent may file a response to the paper within 20 days of the
date of service of the paper. If the order was issued under paragraph
(d)(1) of this section and the party's paper includes a request for
final hearing, the opponent's response must identify every decision of
the administrative patent judge that the opponent wishes to have
reviewed by the Board at a final hearing. If the order was issued under
paragraph (d)(1) of this section and the paper does not include a
request for final hearing, the opponent's response may include a request
for final hearing, which must identify every decision of the
administrative patent judge that the opponent wishes to have reviewed by
the Board at a final hearing. Where only the opponent's response
includes a request for a final hearing, the party filing the paper
shall, within 14 days from the date of service of the opponent's
response, file a reply identifying any other decision of the
administrative patent judge that the party wishes to have reviewed by
the Board at a final hearing. 

(3) The paper or the response should be accompanied by a motion (Section 
1.635) requesting a testimony period if either party wishes to introduce
any evidence to be considered at final hearing (Section  1.671). Any
evidence that a party wishes to have considered with respect to the
decisions and deferred motions identified for consideration or review at
final hearing shall be filed or, if appropriate, noticed under Section 
1.671(e) during the testimony period of the party. A request for a
testimony period shall be construed as including a request for final
hearing. 

(4) If the paper contains an explanation of why judgment should not be
entered in accordance with the order, and if no party has requested a
final hearing, the decision that is the basis for the order shall be
reviewed based on the contents of the paper and the response. If the
paper fails to show good cause, the Board shall enter judgment against
the party against whom the order issued.

Under  37 CFR 1.640, an administrative patent judge will address all
motions.  A hearing  (in person or by telephone)  may be held on a
motion in the discretion of an administrative patent judge. Where
appropriate, an administrative patent judge may consult with an examiner
on a question which arises in the first instance in the interference. 
For example, a party may allege unpatentability over a reference not
previously considered, or may attempt to add a count drawn to subject
matter which was not previously examined.  Consultation will not be
necessary where the examiner had already ruled on the patentability
question which comes before the administrative patent judge or the
Board.

The extent of the consultation will be determined by the administrative
patent judge; the examiner may be consulted merely on one point of
patentability, or may be asked to conduct a search of newly-presented
counts or claims.  The consultation may be informal, as by a telephone
call, or may be by a more formal written memorandum to the examiner.

It should be noted that nothing in  37 CFR 1.640 authorizes conferences
between administrative patent judges and examiners in ex parte appeals
under  35 U.S.C. 134 from an adverse decision of an examiner.

---SECTION---2341 Unpatentability Discovered 

37 CFR 1.641 Unpatentability discovered by administrative patent judge.

(a) During the pendency of an interference, if the administrative patent
judge becomes aware of a reason why a claim designated to correspond to
a count may not be patentable, the administrative patent judge may enter
an order notifying the parties of the reason and set a time within which
each party may present its views, including any argument and any
supporting evidence, and, in the case of the party whose claim may be
unpatentable, any appropriate preliminary motions under Section Section 
1.633(c), (d) and (h).

(b) If a party timely files a preliminary motion in response to the
order of the administrative patent judge, any opponent may file an
opposition (Section  1.638(a)). If an opponent files an opposition, the
party may reply (Section  1.638(b)).

(c) After considering any timely filed views, including any timely filed
preliminary motions under Section  1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.

If the examiner, while the interference is pending, discovers a
reference or other reason which he or she believes would render one or
more of the parties' claims corresponding to the count(s) unpatentable,
the reference or other reason should be brought to the attention of the
administrative patent judge in charge of the interference.  The
administrative patent judge will determine what action, if any, should
be taken in the interference.

---SECTION---2342 Addition to Interference 

37 CFR 1.642 Addition of application or patent to interference.

During the pendency of an interference, if the administrative patent
judge becomes aware of an application or a patent not involved in the
interference which claims the same patentable invention as a count in
the interference, the administrative patent judge may add the
application or patent to the interference on such terms as may be fair
to all parties.

37 CFR 1.642 permits an administrative patent judge to add a newly
discovered patent, as well as newly discovered applications, to an
interference since  35 U.S.C. 135(a) authorizes interferences between
applications and patents.

EXAMINER DISCOVERS ANOTHER APPLICATION OR PATENT DURING INTERFERENCE

If, during the pendency of an interference, the examiner discovers
another application or patent claiming subject matter which is the same
as, or not patentably distinct from, the invention defined in a count of
the interference, the examiner should bring the application or patent to
the attention of the administrative patent judge in charge of the
interference. The administrative patent judge will determine what
action, if any, should be taken in the interference.

If the application in question is for reissue of a patent involved in
the interference, see MPEP Section  2360.

---SECTION---2358 Final Decision

37 CFR 1.658 Final decision.

(a) After final hearing, the Board shall enter a decision resolving the
issues raised at final hearing. The decision may enter judgment, in
whole or in part, remand the interference to an administrative patent
judge for further proceedings, or take further action not inconsistent
with law. A judgment as to a count shall state whether or not each party
is entitled to a patent containing the claims in the party's patent or
application which correspond to the count. When the Board enters a
decision awarding judgment as to all counts, the decision shall be
regarded as a final decision for the purpose of judicial review (35
U.S.C. 141-144, 146) unless a request for reconsideration under
paragraph (b) of this section is timely filed. 

(b) Any request for reconsideration of a decision under paragraph (a) of
this section shall be filed within one month after the date of the
decision. The request for reconsideration shall specify with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision. Any opposition to a request for
reconsideration shall be filed within 14 days of the date of service of
the request for reconsideration. Service of the request for
reconsideration shall be by hand or Express Mail. The Board shall enter
a decision on the request for reconsideration. If the Board shall be of
the opinion that the decision on the request for reconsideration
significantly modifies its original decision under paragraph (a) of this
section, the Board may designate the decision on the request for
reconsideration as a new decision. A decision on reconsideration is a
final decision for the purpose of judicial review (35 U.S.C. 141-144,
146).

(c) A judgment in an interference settles all issues which (1) were
raised and decided in the interference, (2) could have been properly
raised and decided in the interference by a motion under Section  1.633
(a) through (d) and (f) through (j) or Section  1.634, and (3) could
have been properly raised and decided in an additional interference with
a motion under Section  1.633(e). A losing party who could have properly
moved, but failed to move, under Section  1.633 or 1.634, shall be
estopped to take ex parte or inter partes action in the Patent and
Trademark Office after the interference which is inconsistent with that
party's failure to properly move, except that a losing party shall not
be estopped with respect to any claims which correspond, or properly
could have corresponded, to a count as to which that party was awarded a
favorable judgment.

In its final decision, the Board can (1) enter judgment, in whole or in
part, (2) remand the interference to an administrative patent judge or
(3) take further action not inconsistent with law.

A judgment as to a count will state whether or not each party is
entitled to a patent containing claims which correspond to the count. 
When judgment is entered as to all counts, the decision of the Board is
considered final for the purpose of judicial review. 37 CFR 1.658(c)
defines the doctrine of interference estoppel as it is to be applied in
the PTO after an interference is terminated.  See MPEP Section  2363.03.
The definition of interference estoppel is designed to encourage parties
in interference cases to settle as many issues as possible in one
proceeding. 37 CFR 1.658(c) creates an estoppel both as to senior and
junior parties.  An estoppel will not apply with respect to any claims
which correspond, or which properly could have corresponded, to a count
as to which the party is awarded a favorable judgment.

After the Board has rendered a final decision in an interference, the
losing party may either appeal to the Court of Appeals for the Federal
Circuit, under  35 U.S.C. 141, or file a civil action in a United States
district court, under  35 U.S.C. 146.  Upon the filing of an appeal to
the Court of Appeals for the Federal Circuit, the opposing party may
elect to have the proceeding conducted in a district court.  In either
event, the files will be retained at the Board until all court
proceedings have terminated. (The PTO may, but normally does not, issue
the application of a winning party in an interference involving only
applications, notwithstanding the filing of a civil action under  35
U.S.C. 146 by the losing party.  See   Monaco v. Watson, 270 F.2d 335,
122 USPQ 564 (D.C.  Cir. 1959).)  See MPEP Section  1216.

---SECTION---2359 Board Recommendation 

37 CFR 1.659 Recommendation.

(a) Should the Board have knowledge of any ground for rejecting any
application claim not involved in the judgment of the interference, it
may include in its decision a recommended rejection of the claim. Upon
resumption of ex parte prosecution of the application, the examiner
shall be bound by the recommendation and shall enter and maintain the
recommended rejection unless an amendment or showing of facts not
previously of record is filed which, in the opinion of the examiner,
overcomes the recommended rejection.

(b) Should the Board have knowledge of any ground for reexamination of a
patent involved in the interference as to a patent claim not involved in
the judgment of the interference, it may include in its decision a
recommendation to the Commissioner that the patent be reexamined. The
Commissioner will determine whether reexamination will be ordered.

(c) The Board may make any other recommendation to the examiner or the
Commissioner as may be appropriate.

Under  37 CFR 1.659, the Board can make recommendations to examiners and
the Commissioner, including recommendations that application claims not
involved in the interference be rejected and that a patent be reexamined
as to patent claims not involved in the interference.

When a patent is involved in an interference each claim of the patent
will be designated to (1) correspond to a count or (2) not correspond to
a count. All claims which are ultimately determined to correspond to a
count will be involved in the judgment of the interference. Inasmuch as
they are involved in the judgment of the interference, there is no need
to recommend reexamination of those claims. The claims involved in the
interference are either patentable or unpatentable based on the final
decision of the Board.  37 CFR 1.659(b) merely authorizes the Board to
recommend reexamination of patent claims which (1) are not involved in
the judgment and (2) for one reason or another neither party saw fit to
move to designate as corresponding to a count.

---SECTION---2360 Reexamination, Reissue, Protest, or Litigation During
Interference

37 CFR 1.660 Notice of reexamination, reissue, protest or litigation.

(a) When a request for reexamination of a patent involved in an
interference is filed, the patent owner shall notify the Board within 10
days of receiving notice that the request was filed. 

(b) When an application for reissue is filed by a patentee involved in
an interference, the patentee shall notify the Board within 10 days of
the day the application for reissue is filed.

(c) When a protest under Section  1.291 is filed against an application
involved in an interference, the applicant shall notify the Board within
10 days of receiving notice that the protest was filed.

(d) A party in an interference shall notify the Board promptly of any
litigation related to any patent or application involved in an
interference, including any civil action commenced under  35 U.S.C. 146.

(e) The notice required by this section is designed to assist the
administrative patent judge and the Board in efficiently handling
interference cases. Failure of a party to comply with the provisions of
this section may result in sanctions under Section  1.616. Knowledge by,
or notice to, an employee of the Office other than an employee of the
Board, of the existence of the reexamination, application for reissue,
protest, or litigation shall not be sufficient. The notice contemplated
by this section is notice addressed to the administrative patent judge
in charge of the interference in which the application or patent is
involved.

Under  37 CFR 1.660, a party is required to notify the Board when the
party's patent or application becomes involved in other PTO proceedings
(reexamination, reissue, or protest) or litigation.

Before taking any action on the reexamination, reissue, or protest, the
primary examiner should consult the administrative patent judge in
charge of the interference. It is particularly important that a reissue
application not be granted without the approval of the administrative
patent judge. Also see MPEP Section  2284 concerning requests for
reexamination of a patent involved in an interference.

---SECTION---2361 Termination of Interference After Judgment

37 CFR 1.661 Termination of interference after judgment.

After a final decision is entered by the Board, an interference is
considered terminated when no appeal (35 U.S.C. 141) or other review (35
U.S.C. 146) has been or can be taken or had.

37 CFR 1.661 sets forth when an interference is considered terminated
after a judgment is entered in the interference. For the purpose of
filing copies of settlement agreements under  35 U.S.C. 135(c), if an
appeal or civil action is not filed, the interference is considered
terminated as of the date the time for filing an appeal or civil action
expired.  37 CFR 1.661; Tallent v. Lamoine, 204 USPQ 1058 (Comm'r Pat.
1979). See also Nelson v. Bowler, 212 USPQ 760 (Comm'r Pat. 1981).  If
an appeal is taken to the Court of Appeals for the Federal Circuit, the
interference terminates on the date of receipt of the court's mandate by
the Patent and Trademark Office. See MPEP Section  1216.01.  If a civil
action is filed, and the decision of the district court is not appealed,
the interference terminates on the date the time for filing an appeal
from the court's decision expires. Hunter v.   Beissbarth, 15 USPQ2d
1343 (Comm'r Pat. 1990).

---SECTION---2363 Action After Interference

37 CFR 1.664 Action after interference.

(a) After termination of an interference, the examiner will promptly
take such action in any application previously involved in the
interference as may be necessary. Unless entered by order of an
administrative patent judge, amendments presented during the
interference shall not be entered, but may be subsequently presented by
the applicant subject to the provisions of this subpart provided
prosecution of the application is not otherwise closed.

(b) After judgment, the application of any party may be held subject to
further examination, including an interference with another application.

The files are returned to the examining group after termination of the
interference. Jurisdiction of the examiner is automatically restored
with the return of the files, and the cases of all parties are subject
to such ex parte action as their respective conditions may require. The
date when the interference terminates does not mark the beginning of a
statutory period for reply by the applicant. See Ex parte Peterson, 49
USPQ 119, 1941 C.D. 8 (Comm'r Pat. 1941).

Under  37 CFR 1.664(a), the examiner must promptly take such action in
any application which was involved in the interference as may be
necessary. The action to be taken by the examiner depends upon how the
interference was terminated, and in some instances, the basis of the
termination. See MPEP Section  2363.01 to Section  2363.03. All
interferences conducted under  37 CFR 1.601 - 1.688 will be terminated
by judgment. If the interference is one which was conducted under the
former interference rules,  37 CFR 1.201 to 1.288 (generally these were
interferences declared prior to February 11, 1985), an administrative
patent judge should be consulted before taking any action on the
involved application(s).

Before allowing a losing party's application, the examiner should
carefully consider whether the grounds of estoppel have been fully
applied.  In order to promote uniform application of the doctrines of
lost counts and estoppel, the examiner must consult the administrative
patent judge who was in charge of the interference before allowing a
losing party's application.

If an application has been withdrawn from issue for interference and is
again passed to issue, a notation "Re-examined and passed for issue" is
placed on the file wrapper together with a new signature of the primary
examiner in the box provided for this purpose. Such notation will be
relied on by the Publishing Division as showing that the application is
intended to be passed for issue and makes it possible to screen out
those applications which are mistakenly forwarded to the Publishing
Division during the pendency of the interference.

See MPEP Section  1302.12 with respect to listing references discussed
in motion decisions, and MPEP Section  2364 concerning the entry of
amendments.

Form paragraph 23.02 may be used to resume ex parte prosecution.

23.02 Ex Parte Prosecution Is Resumed

Interference No.   [1] has been terminated by a decision   [2] to
applicant. Ex parte prosecution is resumed.

Examiner Note:

In bracket 2, insert whether favorable or unfavorable.

---SECTION---2363.01 No Interference in Fact

The Board may, if it finds that there is no interference in fact, award
judgment to both parties.  In such a case, each party-applicant may be
granted a patent on the claims of the application designated to
correspond to the count, if those claims are otherwise patentable.

---SECTION---2363.02 The Winning Party

If prosecution of the winning party's application had not been closed,
the winning party generally may be allowed additional and broader claims
to the common patentable subject matter. Note, however, In re Hoover
Co., 134 F.2d 624, 57 USPQ 111 (CCPA 1943).  The winning party of the
interference is not denied anything he or she was in possession of prior
to the interference, nor does he or she acquire any additional rights as
a result of the interference.  His or her application thus stands as it
was prior to the interference. If the application was under final
rejection as to some of its claims at the time the interference was
formed, the institution of the interference acted to suspend, but not
vacate, the final rejection. After termination of the interference, a
letter is written the applicant, as in the case of any other action
unanswered at the time the interference was instituted, setting a
shortened period of 2 months within which to file an appeal or cancel
the finally rejected claims.

23.03 Office Action Unanswered

This application contains an unanswered Office action mailed on   [1]. 
A shortened statutory period for reply to such action is set to expire
TWO MONTHS from the mailing date of this letter.

Examiner Note:

This paragraph must be preceded by paragraph 23.02.

---SECTION---2363.03 The Losing Party

37 CFR 1.663 Status of claim of defeated applicant after interference.

Whenever an adverse judgment is entered as to a count against an
applicant from which no appeal (35 U.S.C. 141) or other review (35
U.S.C. 146) has been or can be taken or had, the claims of the
application corresponding to the count stand finally disposed of without
further action by the examiner. Such claims are not open to further ex
parte prosecution.

The Board's judgment in an interference conducted under  37 CFR 1.601 -
1.688 will state that the losing party is not entitled to a patent
containing the claims corresponding to the count or counts.  Under  37
CFR 1.663, such claims "stand finally disposed of without further action
by the examiner."  See also  35 U.S.C. 135(a).  When the files are
returned to the examining group after termination of the interference, a
pencil line should be drawn through the claims as to which a judgment of
priority adverse to an applicant has been rendered, and the notation "
37 CFR 1.663" should be written in the margin to indicate the reason for
the pencil line.  If these claims have not been canceled by the
applicant and the application is otherwise ready for issue, these
notations should be replaced by a line in red ink and the notation " 37
CFR 1.663" in red ink before passing the application to issue, and the
applicant notified of the cancellation by an Examiner's Amendment.  If
an action is necessary in the application after the interference, the
applicant should also be informed that "Claims (designated by numerals),
as to which a judgment adverse to the applicant has been rendered, stand
finally disposed of in accordance with  37 CFR 1.663."

If all the claims in the application are eliminated, a letter should be
written informing the applicant that all the claims in the application
have been disposed of, indicating the circumstances, that no claims
remain subject to prosecution, and that the application will be sent to
the abandoned files with the next group of abandoned applications.
Proceedings are terminated as of the date the interference terminated.
See MPEP Section  2361.

If the losing party's application was under rejection at the time the
interference was declared, such rejection is ordinarily repeated (either
in full or by reference to the previous action) and, in addition, any
other suitable rejections, as discussed below, are made.  If the losing
party's application was under final rejection or ready for issue, his or
her right to reopen the prosecution is restricted to subject matter
related to the issue of the interference.

Where the losing party failed to get a copy of the opponent's drawing or
specification during the interference, the losing party may order a copy
thereof to enable said party to respond to a rejection based on the
successful party's disclosure.  Such order is referred to the
administrative patent judge who has authority to approve orders of this
nature.

In addition to repeating any outstanding rejection, the examiner should
consider whether any remaining claims in the losing party's application
should be rejected on the ground of unpatentability under  35 U.S.C.
102/103, or on the ground of estoppel.

UNPATENTABILITY UNDER 35 U.S.C. 102/103

The examiner should determine from the Board's decision the basis on
which judgment was rendered against the applicant.  If the judgment was
that applicant was not the first inventor of the subject matter in
issue, the application claims may be rejected under  35 U.S.C.
102(g)/103 as unpatentable over the lost counts.  If the judgment was
based on a holding that applicant derived the invention from another, a
rejection of claims as unpatentable over the lost counts under  35
U.S.C. 102(f)/103 may be in order.  Where the Board rendered judgment
against the applicant because his or her claims were unpatentable over
prior art, under  35 U.S.C. 112, or on other grounds, the other claims
in the application should be reviewed to determine whether any of those
grounds may be applicable to them.

ESTOPPEL

Claims which cannot be rejected as unpatentable over the lost counts may
still be subject to rejection on the ground of estoppel.  As stated in 
37 CFR 1.658(c), a losing party who could have properly moved under  37
CFR 1.633 or 1.634, but failed to do so, is estopped to take subsequent
action in the PTO which is inconsistent with the party's failure to
properly move. However, in the event of a "split award," the losing
party is not estopped as to claims which corresponded, or properly could
have corresponded, to a count which he or she won.

The following examples illustrate the application of estoppel to the
losing party:

Example 1

Junior party applicant AL and senior party applicant AK both disclose
separate patentable inventions "A" and "B" and claim only invention A in
their respective applications.  An interference is declared with a
single count to invention A. Neither party files a motion under  37 CFR
1.633(c)(1) to add a count to invention B.  Judgment as to all of AL`s
claims corresponding to the sole count is awarded to junior party
applicant AL. Senior party applicant AK will be estopped to thereafter
obtain a patent containing claims to invention B, because applicant AK
failed to move to add a count to invention B in the interference. 
Junior party applicant AL will not be estopped to obtain a patent
containing claims to invention B.

Example 2

In this example, the facts are the same as in example 1 except that
judgment is awarded as to all AK's claims corresponding to the count to
senior party applicant AK. Junior party applicant AL will be estopped to
obtain a patent containing claims to invention B in the interference. 
Senior party applicant AK will not be estopped to obtain a patent
containing claims to invention B.

Example 3

Junior party applicant AM and senior party applicant AP both disclose
separate patentable inventions "C", "D", and "E" and claim inventions C
and D in their respective applications. An interference is declared with
two counts. Count 1 is to invention C and Count 2 is to invention D.
Neither party files a preliminary motion to add a proposed Count 3 to
invention E. Judgment as to all AM's claims corresponding to Counts 1
and 2 is awarded to junior party AM. Senior party applicant AP will be
estopped to thereafter obtain a patent containing claims to invention E,
because applicant AP failed to move to add a count to invention E to the
interference. Junior party applicant AM will not be estopped to obtain a
patent containing a claim to invention E.

Example 4. 

In this example, the facts are the same as in Example 3 except that
judgment is awarded as to all AP's claims corresponding to Counts 1 and
2 to senior party applicant AP. Junior party applicant AM will be
estopped to obtain a patent containing claims to invention E, because
applicant AM failed to move to add a count to invention E in the
interference. Senior party applicant AP will not be estopped to obtain a
patent containing claims to invention E.

Example 5. 

In this example, the facts are the same as in Example 3 except that
judgment is awarded on all of AM s claims corresponding to Count 1 to
junior party applicant AM and judgment is awarded to all AP's claims
corresponding to Count 2 to senior party applicant AP. Both parties will
be estopped to obtain a patent containing claims to invention E, because
neither moved to add a count to invention E during the interference.
Assume that junior party AM could have properly moved under  37 CFR
1.633(f) to be accorded the benefit of an earlier application, but did
not do so during the interference. Junior party AM will not be estopped
in subsequent ex parte prosecution from asking for benefit of the
earlier application as to the invention defined by Count 1. Accordingly,
if the examiner were to reject junior party AM's claim corresponding to
Count 1 on the basis of some newly discovered art, junior party AM could
properly antedate the prior art by seeking the benefit under  35 U.S.C.
120 of the earlier application. Thus even though junior party AM was a
"losing party" as to Count 2 (an adverse judgment as to junior party
AM's claims corresponding to Count 2 having been entered), junior party
AM was awarded a favorable judgment (37 CFR 1.658(c)) as to Count 1.
Junior party AM will be estopped in subsequent ex parte prosecution from
attempting to be accorded the benefit of the earlier application as to
the invention of Count 2.

Example 6.

Applicant AQ discloses and claims invention "F." Applicant AR discloses
and claims separate patentable inventions "F" and "G." The assignee of
applicant AQ also owns an application of applicant AS which discloses
and claims invention "G." An interference is declared between applicant
AQ and applicant AR. The sole count is directed to invention F. No
motion is filed by applicant AQ or its assignee to declare an additional
interference between applicant AR and applicant AS with a count to
invention G. A judgment as to all AR's claims corresponding to the sole
count is awarded to applicant AR. Applicant AS and the assignee will be
estopped to obtain a patent containing claims to invention G, because
applicant AQ and the assignee failed to move to declare an additional
interference with a count to invention G.

Example 7

The facts in this example are the same as the facts in Example 6 except
that judgment as to all of AQ's claims corresponding to the sole count
is awarded to applicant AQ. Applicant AS and the assignee would not be
estopped, because applicant AQ was not a "losing party" (37 CFR
1.658(c)).

Example 8

Applicant AT discloses a generic invention to "solvent" and a species to
"benzene." Application AT contains a patentable claim 1 (solvent) and no
other claims. Applicant AU discloses the generic invention to "solvent"
and species to "benzene" and "toluene." Application AU contains
patentable claim 3 (solvent) and no other claims. An interference is
declared with a single count (solvent). Claim 1 of application AT and
claim 3 of application AU are designated to correspond to the count. No
preliminary motions are filed. A judgment is entered in favor of
applicant AT on the claim corresponding to the sole count. Applicant AU
would be estopped to obtain a patent containing a claim to benzene,
because applicant AU failed to file a preliminary motion under  37 CFR
1.633(c)(1) seeking to add a count to benzene and benzene was disclosed
in winning party AT's application. Applicant AU would also be estopped
to obtain a patent containing a claim to toluene, unless "toluene"
defines a "separate patentable invention" from  "solvent." A basis for
interference estoppel (37 CFR 1.658(c)) exists if  "toluene"  and 
"solvent"  define the "same patentable invention" because a claim to
"toluene" could properly have been added and designated to correspond to
the count. See  37 CFR 1.633(c)(2).

The following two examples illustrate the application of estoppel
against an applicant who lost the interference based solely on the fact
that the applicant was unable to establish a date of invention prior to
the opponent's foreign filing date (see Ex parte Tytgat, 225 USPQ 907
(Bd. App. 1985)):

Example 9.

Application AV discloses engines in general and in particular a
6-cylinder engine. Application AV contains only claim 1 (engine).
Application AW discloses engines in general, but does not specifically
disclose a 6-cylinder engine. Application AW contains only a single
claim 3 (engine). The U.S. "filing date" (37 CFR 1.601(h) of the AV
application is prior to the U.S. filing date of the AW application, but
the AW application claims a foreign priority date under  35 U.S.C. 119
based on an application filed in a foreign country prior to the filing
date of the AV application. An interference is declared.  The sole count
of the interference is to "an engine." Claim 1 of the AV application and
claim 3 of the AW application are designated to correspond to the count.
During the interference, applicant AV does not move under  37 CFR
1.633(c)(2) to add a claim to a 6-cylinder engine and to designate the
claim to correspond to the count. Applicant AW is awarded a judgment in
the interference based on the earlier filing date of the foreign
application. After the interference, applicant AV adds claim 2
(6-cylinder engine) to the AV application. Whether AV would be entitled
to a patent containing a claim to a 6-cylinder engine will depend solely
on whether a 6-cylinder engine is a "separate patentable invention" from
"engine" - the subject matter of the count. If a 6-cylinder engine is a
"separate patentable invention" within the meaning of  37 CFR 1.601(n),
applicant AV could not have successfully moved under  37 CFR 1.633(c)(2)
to add claim 2 and to designate it to correspond to the count. Therefore
applicant AV could obtain a patent containing claim 2. If, on the other
hand, a 6-cylinder engine is not a "separate patentable invention," 
claim 2 of the AV application would be rejected on the basis of
interference estoppel because claim 2 could have been added by a motion
under  37 CFR 1.633(c)(2). See  37 CFR 1.658(c).

Example 10. 

This example is basically the same as Example 9, except that application
AV initially contains claim 1 (engine) and claim 2 (6-cylinder engine).
When the interference is declared, both claims 1 and 2 of application AV
are designated to correspond to the count. During the interference, 
applicant AV does not move under  37 CFR 1.633(c)(4) to designate claim
2 as not corresponding to the count. A judgment in the interference is
entered for applicant AW based on the earlier filing date of the foreign
patent application. After the interference, applicant AV would not be
able to obtain a patent containing claim 2, because the claim was
designated to correspond to a count and entry of the judgment
constitutes a final decision by the PTO refusing to grant applicant AV a
patent containing claim 2.

ALLOWANCE OF LOSING PARTY'S APPLICATION

Before allowing a losing party's application, the examiner should
carefully consider whether the grounds of estoppel have been fully
applied.  In order to promote uniform application of the doctrines of
lost counts and estoppel, the examiner must consult the administrative
patent judge who was in charge of the interference before allowing the
losing party's application.

---SECTION---2364 Entry of Amendments

Under  37 CFR 1.637(c)(1) and (2), (d)(3), (e)(1) and (2), or (h), a
moving party is required to submit with his or her motion as a separate
paper, an amendment embodying the proposed claims if the claims are not
already in the application concerned. In the case of an application
involved in the interference, this amendment is not entered at that time
but is placed in the application file.

An amendment filed in connection with a motion to add or substitute
counts in an interference must include any claim or claims to be added
and be accompanied by the appropriate fees (or fee authorization), if
any, which would be due if the amendment were to be entered, even though
it may be that the amendment will never be entered. Only upon the
granting of the motion may it be necessary for the other party or
parties to present claims, but the fees  (or fee authorization) must be
paid whenever claims are presented. Claims which have been submitted in
reply to a suggestion by the Office for inclusion in an application must
be accompanied by the fee due (or fee authorization), if any.  Money
paid in connection with the filing of a proposed amendment will not be
refunded by reason of the nonentry of the amendment.

If the motion is granted, the amendment is entered at the time decision
on the motion is rendered. If the motion is not granted, the amendment,
though left in the file, is not entered and is so marked.

If the motion is granted only in part and denied as to another part,
only so much of the amendment as is covered in the grant of the motion
is entered, the remaining part being indicated and marked "not entered"
in pencil.  See  37 CFR 1.644.

In each instance, the applicant is informed of the disposition of the
amendment in the first action in the application following the
termination of the interference.  If the application is otherwise ready
for issue, the applicant is notified that the application is allowed and
the Notice of Allowance will be sent in due course, that prosecution is
closed, and to what extent the amendment has been entered.

As a corollary to this practice, it follows that where prosecution of
the winning application had been closed prior to the declaration of the
interference, as by being in condition for issue, that application may
not be reopened to further prosecution following the interference, even
though additional claims had been presented in connection with a motion
in the interference.

It should be noted at this point that, under  37 CFR 1.663, the entry of
an adverse judgment against a party who requests same pursuant to  37
CFR 1.662(a) finally disposes of all claims of that party's application
which are designated as corresponding to the count.

---SECTION---2364.01 Amendments Filed During Interference 

When an amendment to an application involved in an interference is
received, the examiner inspects the amendment and, if necessary, the
application, to determine whether or not the amendment affects the
pending or any prospective interference.  If the amendment is an
ordinary one properly responsive to the last regular ex parte action
preceding the declaration of the interference and does not affect the
pending or any prospective interference, the amendment is marked in
pencil "not entered" and placed in the file, a corresponding entry being
endorsed in ink in the contents column of the wrapper. After termination
of the interference, the amendment may be permanently entered and
considered as in the case of ordinary amendments filed during the ex
parte prosecution of the application.

  Under  37 CFR 1.615(a),  amendments related to an application involved
in a pending interference will not be entered without the consent of an
administrative patent judge. See MPEP Section  2315.  Therefore, the
examiner should receive the approval of the administrative patent judge
in charge of an interference before entering any amendments in any of
the cases involved in the interference (see MPEP Section  2309).

If the amendment is filed in reply to a letter by the primary examiner,
suggesting a claim or claims for interference with another party and for
the purpose of declaring an additional interference, the examiner, after
obtaining the consent of the administrative patent judge, enters the
amendment and takes the proper steps to initiate the second
interference.

If the amendment is one filed in an application where the administrative
patent judge has consented to ex parte prosecution of an appeal to the
Board of Patent Appeals and Interferences being conducted concurrently
with the interference proceeding (see MPEP Section  2315) and if it
relates to the appeal, it should be treated like any similar amendment
in an ordinary appealed application.

When an amendment filed during interference purports to put the
application in condition for another interference either with a pending
application or with a patent, the primary examiner must personally
consider the amendment sufficiently to determine whether, in fact, it
does so, and should then consult with the administrative patent judge.
With the consent of the administrative patent judge, one of the
following three actions may be appropriate.

(A) If the amendment presents allowable claims directed to an invention
claimed in a patent or in another pending application in issue or ready
for issue, the examiner borrows the file, enters the amendment, and
takes the proper steps to initiate the second interference.

(B) Where in the opinion of the examiner, the proposed amendment does
not put the application in condition for interference with another
application not involved in the interference, the amendment is placed in
the file and marked "not entered" and the applicant is informed why it
will not be now entered and acted upon.

(C) When the amendment seeks to provoke an interference with a patent
not involved in the interference and the examiner believes that the
claims presented are not patentable to the applicant, and where the
application is open to further ex parte prosecution, the file should be
obtained, the amendment entered, and the claims rejected, setting a time
period for reply. If reconsideration is requested and rejection made
final, a time period for appeal should be set. Where the application at
the time of forming the interference was closed to further ex parte
prosecution and the disclosure of the application will prima facie, not
support the claim presented, or where the claims presented are drawn to
a nonelected invention, the amendment will not be entered and the
applicant will be so informed giving very briefly the reason for the
nonentry of the amendment.

---SECTION---2365 Second Interference

37 CFR 1.665 Second interference.

A second interference between the same parties will not be declared upon
an application not involved in an earlier interference for an invention
defined by a count of the earlier interference. See Section  1.658(c).

