Interfering Subject Matter

37 CFR 41.203   Declaration.

(a)

Interfering subject matter

. An interference exists if the

subject matter of a claim of one party would, if prior art, have anticipated or

rendered obvious the subject matter of a claim of the opposing party and vice

versa.

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A claim of one inventor can be said to interfere with the claim of

another inventor if they each have a patentable claim to the same invention. The Office

practice and the case law define “same invention” to mean patentably indistinct

inventions. See

Case v. CPC Int’l, Inc.,

730 F.2d 745, 750, 221 USPQ

196, 200 (Fed. Cir. 1984);

Aelony v. Arni,

547 F.2d 566, 570, 192

USPQ 486, 489-90 (CCPA 1977);

Nitz v. Ehrenreich,

537 F.2d 539, 543,

190 USPQ 413, 416 (CCPA 1976); and

Ex parte Card,

1904 C.D. 383,

384-85 (Comm’r Pats. 1904). If the claimed invention of one party is patentably distinct

from the claimed invention of the other party, then there is no interference-in-fact.

See

Nitz v. Ehrenreich,

537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA

1976).

37 CFR

41.203(a)

states the test in terms of the familiar concepts of

obviousness and anticipation. See

Tas v. Beachy,

626 Fed. App'x. 999,

1001 (Fed. Cir. 2015)(nonprecedential) (an interference exists if the subject matter of

a claim of one party would, if prior art, have anticipated or rendered obvious the

subject matter of a claim of the opposing party and vice versa);

Eli Lilly

& Co. v. Bd. of Regents of the Univ. of Wa.,

334 F.3d 1264, 1269-70, 67

USPQ2d 1161, 1164-65 (Fed. Cir. 2003) (affirming the Office’s interpretive rule).

Identical language in claims does not guarantee that they are drawn to

the same invention. Every claim must be construed in light of the application in which

it appears for purpose of evaluating whether there is interfering subject matter, unlike

when evaluating whether copied claims comply with the written description requirement

where the originating disclosure is consulted. See

Agilent Techs., Inc. v.

Affymetrix, Inc.,

567 F.3d 1366, 1375, 91 USPQ2d 1161, 1167 (Fed. Cir

me invention. Every claim must be construed in light of the application in which

it appears for purpose of evaluating whether there is interfering subject matter, unlike

when evaluating whether copied claims comply with the written description requirement

where the originating disclosure is consulted. See

Agilent Techs., Inc. v.

Affymetrix, Inc.,

567 F.3d 1366, 1375, 91 USPQ2d 1161, 1167 (Fed. Cir.

2009) (when a party challenges written description support for a copied claim in an

interference, the originating disclosure provides the meaning of the pertinent claim

language). Claims reciting means-plus-function limitations, in particular, might have

different scopes depending on the corresponding structure described in the written

description.

When an interference is declared, there is a description of the

interfering subject matter, which is called a “count.” Claim correspondence identifies

claims that would no longer be allowable or patentable to a party if it loses the

priority determination for the count. To determine whether a claim corresponds to a

count, the subject matter of the count is assumed to be prior art to the party. If the

count would have anticipated or supported an obviousness determination against the

claim, then the claim corresponds to the count. See

37 CFR 41.207(b)(2)

. Every count

must have at least one corresponding claim for each party, but it is possible for a

claim to correspond to more than one count.

Example 1

A patent has a claim to a compound in which R is an alkyl group. An

application has a claim to the same compound except that R is n-pentyl, which is an

alkyl. The application claim, if prior art to the patent, would have anticipated the

patent claim. The patent claim would not have anticipated the application claim. If,

however, in the art n-pentyl would have been an obvious choice for alkyl, then the

claims define interfering subject matter.

Example 2

An application has a claim to a boiler with a novel safety valve. A

patent has a claim to just the safety valve

cation claim, if prior art to the patent, would have anticipated the

patent claim. The patent claim would not have anticipated the application claim. If,

however, in the art n-pentyl would have been an obvious choice for alkyl, then the

claims define interfering subject matter.

Example 2

An application has a claim to a boiler with a novel safety valve. A

patent has a claim to just the safety valve. The prior art shows that the need for

boilers to have safety valves is well established. The application claim, when

treated as prior art, would have anticipated the patent claim. The patent claim, when

treated as prior art and in light of the boiler prior art, can be shown to render the

application claim obvious. The claims interfere.

Example 3

An application has a claim to a reaction using platinum as a

catalyst. A patent has a claim to the same reaction except the catalyst may be

selected from the Markush group consisting of platinum, niobium, and lead. Each claim

would have anticipated the other claim when the Markush alternative for the catalyst

is platinum. The claims interfere.

Example 4

Same facts as Example 3, except the applicant has a Markush group

for the catalyst consisting of platinum, osmium, and zinc. Each claim would have

anticipated the other claim when the Markush alternative for the catalyst in each

claim is platinum. The claims interfere.

Example 5

An application has a claim to a protein with a specific amino acid

sequence shown in SEQ ID NO:1. A patent has a claim to the genus of polynucleotides

defined as encoding the same amino acid sequence as the applicant’s SEQ ID NO:1. The

patent claim would have anticipated the application claim since it expressly

describes an amino acid sequence identical to the protein of the application. The

application claim would have rendered the patent claim obvious in light of a

well-established relationship between nucleic acids for encoding amino acids in

protein sequences. The claims interfere

sequence as the applicant’s SEQ ID NO:1. The

patent claim would have anticipated the application claim since it expressly

describes an amino acid sequence identical to the protein of the application. The

application claim would have rendered the patent claim obvious in light of a

well-established relationship between nucleic acids for encoding amino acids in

protein sequences. The claims interfere.

Example 6

A patent has a claim to a genus of polynucleotides that encode a

protein with a specific amino acid sequence. An application has a claim to a

polynucleotide that encodes a protein with the same amino acid sequence. The

application claim is a species within the genus and thus would have anticipated the

patent claim. The patent claim would not have anticipated or rendered the application

claim obvious without some explanation of why a person having ordinary skill in the

art would have selected the applicant’s species from the patentee’s genus. Generally

the explanation should include citation to prior art supporting the obviousness of

the species. Without the explanation, the claims do not interfere.

Example 7

A patent and an application each claim the same combination

including “means for fastening.” The application discloses glue for fastening, while

the patent discloses a rivet for fastening. Despite otherwise identical claim

language, the claims do not interfere unless it can be shown that in this art glue

and rivets were considered structurally equivalent or would have rendered each other

obvious.

Example 8

A patent claims a formulation with the surfactant sodium lauryl

sulfate. An application claims the same formulation except no specific surfactant is

described. The application discloses that it is well known in the art to use sodium

lauryl sulfate as the surfactant in these types of formulations. The claims

interfere.

Example 9

An applicant has a claim to a genus and a species within the genus.

The interference is declared with two counts, one directed to the genus and one

directed to the species

me formulation except no specific surfactant is

described. The application discloses that it is well known in the art to use sodium

lauryl sulfate as the surfactant in these types of formulations. The claims

interfere.

Example 9

An applicant has a claim to a genus and a species within the genus.

The interference is declared with two counts, one directed to the genus and one

directed to the species. The species claim would correspond to the species count

because the count would have anticipated the claimed subject matter. The genus count

would not ordinarily have anticipated the species claim, however, so the species

claim would only correspond to the genus count if there was a showing that the genus

count would have rendered the claimed species obvious. The genus claim, however,

would have been anticipated by both the genus count and the species count and thus

would correspond to both counts.