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motion and must, unless they stand allowed, be distinguished from the prior art of record or sufficient other reason for their patentability given. The reason why an additional count is necessary must be stated and when more than one count is proposed, the motion must point out wherein they differ materially from each other and why each proposed count is necessary to the interference. The proposed claims must also be applied to the disclosure of each application involved in the motion, except as to an application in which the claims already appear and the claims identified as originating therein.
(e) On the granting of such motion and the adoption of the claims by the other parties within a time specified, and after the expiration of the time for filing any new preliminary statements, the primary examiner shall redeclare the interference or shall declare such other interferences as may be necessary to include said claims. A preliminary statement as to the added claims need not be filed if a party states he intends to rely on the original statement and such a declaration as to added claims need not be signed or sworn to by the inventor in person. A second motion period will not be set and subsequent motions with respect to such matters as could have been raised during the motion period will not be considered.
234. Motion to include another application. (a) Any party to an interference may bring a motion to add (subject to the provisions of rule 201 (c)) or substitute any other application owned by him, as to the existing issue; or to include any other application or patent owned by him as to any subject matter disclosed in his application or patent involved in the interference and in an opposing party's application or patent in the interference which should be made the basis of interference between himself and such other party.
(b) Such motions are subject to the same conditions and the procedure in connection therewith is the same, so far as applicable, as set forth in rule 233 for motions to amend.
235. Motions relating to burden of proof. Any party may bring a motion to shift the burden of proof on the ground that he is entitled to the benefit of the filing date of an earlier domestic or foreign application, or on the ground that an opposing party is not entitled to the benefit of an earlier application of which he has been given the benefit in the declaration. (See rule 224.)
236. Hearing and determination of motions. (a) The motions specified must contain a full statement of the grounds therefor, and any briefs or memoranda in support thereof or in opposition thereto shall, except as hereinafter provided, be filed in the Patent Office not less than ten days prior to the date of hearing and, if not so filed, consideration thereof may be refused.
(b) If, in the opinion of an examiner of interferences, such motions, and motions of a similar character, be in proper form, they will be set for hearing before the primary examiner, due notice of the day of hearing being given by the Office to all parties. Appearance at the hearing is not required; any party may waive oral hearing and, in lieu of appearance at the hearing, file a reply brief no later than three days following the date of the hearing provided he has filed the principal brief referred to in paragraph (a). If, in the opinion of the examiner of interferences, the motion be not in proper form, or if it be not brought within the time specified and no satisfactory reason given for the delay, it will not be considered and the parties will be so notified. Consideration of matters raised by motion which can be considered at final hearing may, as directed by the Commissioner, be deferred to final hearing.
(c) Setting a motion brought under the provisions of rules 231 to 235 for hearing will act as a stay of proceedings pending the determination of the motion.
(d) In the determination of a motion to dissolve an interference between an application and a patent, the prior art of record in the patent file may be referred to for the purpose of construing the issue.
237. Dissolution on motion of examiner. (a) If, during the pendency of an interference, a reference or other reason be found which, in the opinion of the primary examiner, renders all or part of the counts unpatentable, the attention of the examiners of interferences shall be called thereto unless the interference is before the primary examiner for determination of a motion. The interference may be suspended and referred to the primary examiner for his determination of the question of patentability, in which case the interference shall be dissolved or continued in accordance with such determination. The consideration of such reference or reason by the primary examiner shall be inter partes as in the case of a motion to dissolve. If such reference or reason be found while the interference is before the primary examiner for determination of a motion, decision thereon may be incorporated in the decision on the motion, but the parties shall be entitled to reconsideration or rehearing if they have not been heard on the matter. (See rule 236.)
(b) Prior to the approval of the preliminary statements and notification of the parties thereof (rule 226), an interference may be withdrawn at the request of the primary examiner, in which event the interference shall be considered as not having been declared.
238. Addition of new party by examiner. If, during the pendency of an interference, another case appears, claiming substantially the subject matter in issue, the primary examiner may request the suspension of the interference for the purpose of adding said case. Such suspension will be granted as a matter of course by an examiner of interferences if no testimony has been taken. If, however, any testimony may have been taken, a notice for the proposed new party, disclosing the issue in interference and the names and addresses of the interferants and of their attorneys or agents, and notices for the interferants disclosing the name and address of the said party and his attorney or agent, shall be prepared by the primary examiner and forwarded to the examiner of interferences, who shall mail said notices and set a time for stating any objections and at his discretion a time of hearing on the question of the admission of the new party. If the examiner of interferences be of the opinion that the interference should be suspended and the new party added, he shall prescribe the terms for such suspension.
INTERFERENCES: MISCELLANEOUS PROVISIONS
241. Copies of part of application. When an application is involved in an interference in which a part only of the invention is included in the issue, the applicant may file certified copies, one for the record and one for each opposing party, of the part or parts of the specification and drawings, and other papers in the file, which exclude merely the noninterfering disclosure, and such copies may be used in the proceedings in place of the complete application.
242. Prosecution by assignee. When on motion duly made and upon satisfactory proof, it shall be shown that, by reason of the inability or refusal of the inventor to take suitable action in an interference, or from other cause, the ends of justice require that an assignee of an undivided interest in the invention be permitted to prosecute the same, it may be so ordered.
243. Motions before the Examiners of Interferences. Motions of a character other than specified in rules 232 to 236 will be determined by an examiner of interferences or the Board of Patent Interferences, as may be deemed appropriate. Such motions shall be made in writing and shall contain a full statement of the action sought and the grounds therefor, and satisfactory proof of any facts required, if necessary, must accompany the motion. Oral hearings will not be held except on order of the examiner of interferences or Board of Patent Interferences. Briefs or memoranda in support of such motions shall accompany the motion. Any reply to the motion, together with
any brief or memorandum in support thereof, shall be filed within ten days unless some other date is set by the examiner of interferences.
244. Motions; miscellaneous provisions. (a) Typewritten briefs may be used in connection with all motions. By stipulation of the parties subject to approval or by order of the tribunal before whom the motion is pending, briefs may be received if filed otherwise than as prescribed.
(b) In oral hearings on motions, the moving parties shall have the right to make the opening and closing arguments. Unless otherwise ordered before the hearing begins, oral arguments will be limited to one-half hour for each party.
(c) Petitions for reconsideration or modification of the decision must be filed within twenty days after the date of the decision.
(d) There is no appeal from decisions rendered on motions, either of the primary examiners or of the examiners of interferences, but the Commissioner may consider on petition any matter involving abuse of discretion or the exercise of his supervisory authority, or such other matters as he may deem proper to consider. Any such petition must comply with rule 181 and, if not filed within twenty days from the decision complained of, may be dismissed as untimely.
245. Extensions of time. Extensions of time in any case not otherwise provided for may be had by stipulation of the parties, subject to approval, or on motion duly brought, sufficient cause being shown for such extension.
246. Stay of proceedings. Except as provided in rule 236, to effect a stay of proceedings, motion should be made before the tribunal having jurisdiction of the interference, who will, sufficient ground appearing therefor, order a suspension of the interference pending the determination of such motion.
247. Service of papers. Every paper filed in the Patent Office in interference cases must be served upon the other parties as provided in rule 248, except the following, (a) the application involved and any papers therein prior to the time the other party has the right of access thereto (rule 226), and any application referred to by the examiner in the notice of interference (rule 207) or by the party in a timely filed preliminary statement, (b) preliminary statements, (c) ex parte requests for extension of time to file preliminary statements (rule 218), (d) documentary exhibits introduced at the taking of a deposition, (e) original transcripts of testimony (but copies of the record must be served (rule 253)), (f) statutory disclaimers under 35 U. S. C. 253 and
(g) disclaimers, concessions of priority or abandonments of the invention under rule 262. The specification in certain rules that a designated paper must be served does not imply that other papers, not enumerated above, need not be served. However, the requirement for service of designated papers may be waived under particular circumstances and service may be required of other designated papers which need not ordinarily be served. Proof of such service must be made before the paper will be considered in the interference by the Office. A statement of the attorney, attached to or appearing in the original paper when filed, clearly stating the time and manner in which service was made will be accepted as prima facie proof of service except as stated in rule 273.
248. Service of papers; manner of service. Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in either of the following ways: (a) by delivering a copy of the paper to the person served; (b) by leaving a copy at the usual place of business of the person served with someone in his employment; (c) when the person served has no usual place of business, by leaving a copy at his residence, with a member of his family over 14 years of age and of discretion; (d) transmission by first class or registered mail. Whenever it shall be satisfactorily shown to the Commissioner that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.
251. Assignment of times for taking testimony. (a) Times will be assigned in which the junior party shall complete his testimony in chief, and in which the other party shall complete the testimony on his side, and a further time in which the junior party may take rebutting testimony, but he shall take no other testimony. If there be more than two parties to the interference, the times for taking testimony will be so arranged that each shall have an opportunity to prove his case against prior parties and to rebut their evidence, and also to meet the evidence of junior parties.
(b) The time for taking testimony will ordinarily be assigned in notices sent to the parties after motions under rules 232 to 235 have been determined or, if no such motions have been filed, after the close of the motion period (rule 231). The date for final hearing will ordinarily be set in the same notices.
(c) Testimony shall be taken during the times assigned in accordance with rules 271 et seq.