1. Board of Patent Appeals and Interferences May 15, 2008 1 Interference Practice Q&A James T. Moore Administrative Patent Judge 571-272-9797

2. Board of Patent Appeals and Interferences May 15, 2008 2 I. Interference Web Portal Questions 1. Could we get an update on the web pilot program—from Judge Moore's standpoint and from the standpoint of the Trial Section APJs?

3. Board of Patent Appeals and Interferences May 15, 2008 3 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?

4. Board of Patent Appeals and Interferences May 15, 2008 4 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 ?

5. Board of Patent Appeals and Interferences May 15, 2008 5 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?

6. Board of Patent Appeals and Interferences May 15, 2008 6 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?

7. Board of Patent Appeals and Interferences May 15, 2008 7 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?

8. Board of Patent Appeals and Interferences May 15, 2008 8 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.

9. Board of Patent Appeals and Interferences May 15, 2008 9 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?

10. Board of Patent Appeals and Interferences May 15, 2008 10 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.

11. Board of Patent Appeals and Interferences May 15, 2008 11 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?

12. Board of Patent Appeals and Interferences May 15, 2008 12 II. Interference Practice Questions 14. Does 135(b)(2) apply to the actual filing date or effective filing date?

13. Board of Patent Appeals and Interferences May 15, 2008 13 II. Interference Practice Questions 15. What is the average pendency between the IPS's memo/analysis and the Notice Declaring Interference?

14. Board of Patent Appeals and Interferences May 15, 2008 14 II. Interference Practice Questions 16. When is live testimony appropriate? (E.G., live cross examination before the panel).

15. Board of Patent Appeals and Interferences May 15, 2008 15 II. Interference Practice Questions 17. Do the Judges watch deposition videos? 18. Under what circumstances?

16. Board of Patent Appeals and Interferences May 15, 2008 16 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?"

17. Board of Patent Appeals and Interferences May 15, 2008 17 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?

18. Board of Patent Appeals and Interferences May 15, 2008 18 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.

19. Board of Patent Appeals and Interferences May 15, 2008 19 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?

20. Board of Patent Appeals and Interferences May 15, 2008 20 II. Interference Practice Questions 23. Can the Board discuss the current procedures for obtaining transcripts from oral argument prior to a final decision?

21. Board of Patent Appeals and Interferences May 15, 2008 21 II. Interference Practice Questions 24. Can the Board discuss whether it continues to try to expedite issuing decisions?

22. Board of Patent Appeals and Interferences May 15, 2008 22 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).

23. Board of Patent Appeals and Interferences May 15, 2008 23 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).