Recent Rule Changes

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Interference Practice QA
James T. Moore Administrative Patent
Judge 571-272-9797
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• I. Interference Web Portal Questions
• 1. Could we get an update on the web pilot
  programfrom Judge Moore's standpoint and from
  the standpoint of the Trial Section APJs?

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• I. Interference Web Portal Questions
• 2. Why is there no guidance on the Interference
  Web Portal page of the metes and bounds of its
  the Interference Web Portal database contents, by
  date, interference number, or any other metric?

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• I. Interference Web Portal Questions
• 3. Why is there no guidance on the Interference
  Web Portal page on how to use the Interference
  Web Portal ?

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• I. Interference Web Portal Questions
• 4. Why does the Interference Web Portal not
  accept wild cards for any search fields?
• 5. Why does the interference Web Portal not
  return all records when the search field is left
  blank?

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• I. Interference Web Portal Questions
• 6. Why does the interference Web Portal not
  provide a search by date fields, such as date of
  declaration, date of application?
• 7. Why does the interference Web Portal not
  provide a search by APJ?

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• I. Interference Web Portal Questions
• 8. Problems with the web portal for efiling
  occur from time to time. If the Board adopts
  efiling via the web portal for all interferences
  (if all aren't already in the pilot), will the
  parties be authorized ahead of time to file via
  email when the portal is experiencing
  difficulties, or will they need to continue to
  try to contact Judge Moore?

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• I. Interference Web Portal Questions
• 9. Can the Board update the list of Interference
  Practice Specialists on their webpage (or at
  least provide us with an updated list)? It says
  it was last updated in October, and several
  months ago two of the listed Examiners told me
  they were no longer handling interferences.

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• II. Interference Practice Questions
• 10. Can a party file an opposition or reply to a
  request for rehearing of an entry of judgment, as
  a matter of right?

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• II. Interference Practice Questions
• 11. How many interferences were decided during
  the last fiscal year by the Board's making
  decisions on priority?
• 12. How many interferences were decided during
  the last fiscal year by the Board's making
  decisions on issues other than priority.

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• II. Interference Practice Questions
• 13. It appears that petitions under 37 CFR 41.3
  are rare. Under what circumstances has the Board
  entertained such petitions in interferences?

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• II. Interference Practice Questions
• 14. Does 135(b)(2) apply to the actual filing
  date or effective filing date?

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• II. Interference Practice Questions
• 15. What is the average pendency between the
  IPS's memo/analysis and the Notice Declaring
  Interference?

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• II. Interference Practice Questions
• 16. When is live testimony appropriate? (E.G.,
  live cross examination before the panel).

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• II. Interference Practice Questions
• 17. Do the Judges watch deposition videos?
• 18. Under what circumstances?

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• II. Interference Practice Questions
• 19. When providing the Motions List (SO 204)
  that a party seeks authorization to file, does it
  matter whether the party describes a particular
  motion as "substantive" or "responsive" or
  "miscellaneous?"

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• II. Interference Practice Questions
• 20. If you notice an error -- what amounts to
  a typographical error or a ministerial error --
  in either the Count or one of your claims, what
  type of motion should be filed to correct it?
  Substantive or miscellaneous?

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• II. Interference Practice Questions
• 21. The SO doesn't provide much detail as to
  what's required in a motions list, and the Trial
  Section APJs seem to differ in how much detail
  they require in a motion list. Could the Board
  provide examples of the required level of detail
  for a motions list, as the SO does for motions,
  oppositions, replies, and appendices? The Board
  views the motions list as a tool for planning the
  course of an interference, but having more
  guidance would make the initial conference call
  more productive.

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• II. Interference Practice Questions
• 22. Can the Board discuss whether interference
  cases are expedited within the PTO? For example,
  if a case is filed to provoke an interference,
  will examination of the application be expedited
  and the turn around time decreased once a case
  gets to the Board?

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• II. Interference Practice Questions
• 23. Can the Board discuss the current
  procedures for obtaining transcripts from oral
  argument prior to a final decision?

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• II. Interference Practice Questions
• 24. Can the Board discuss whether it continues
  to try to expedite issuing decisions?

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• III. Recent BPAI Precedential Decisions
• Ex parte Kubin, 83 USPQ2d 1410 (BPAI 2007)
  (expanded panel) (obvious to try).
• Ex parte Smith, 83 USPQ2d 1509 (BPAI 2007)
  (expanded panel) (predictable use of prior art
  elements according to their established
  functions).
• Ex parte Catan, 83 USPQ2d 1569 (BPAI 2007)
  (expanded panel) (precise teaching of teaching,
  suggestion or motivation not required).

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• III. Recent BPAI Precedential Decisions
• Ex parte Fu, Appeal No. 2008-0601, 2008 WL
  867826 (BPAI March 31, 2008) (expanded panel)
  (one skilled in the art would anticipate success
  in substituting one species for its genus where
  the genus contains a limited number of species,
  citing KSR).