GIL et al.v.ABRAMOVITZ et al.

Board of Patent Appeals and Interferences

Aug 7, 1998

08155005 (B.P.A.I. Aug. 7, 1998)

Application 08/155,005, filed November 19, 1993. 1
Assignors to Allergan & Arozona Board of Regents.
Application 08/083,746, filed June 25, 1993. Assignors2
to Merck Frosst Canada Inc.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
DANIEL W. GIL and JOHN W. REGAN,
Junior Party,1
v.
MARK ABRAMOVITZ, KATHLEEN MATTERS,
MOHAMMED ADAM, YVES BOIE
and THOMAS H. RUSHMORE,
Senior Party.2
_______________
Patent Interference No. 103,966
_______________
Before CAROFF, SCHAFER and HANLON, Administrative Patent
Judges.
Interference No. 103,966
We note that an unopposed preliminary motion to, inter3
alia, add Gil et al. claims 29-32 and Abramovitz et al. claims
14-17, respectively, to each of the involved applications was
granted in a Decision on Motions (Paper No. 19). Attention is
directed to the statements in that decision advising the
parties to make sure that those claims are formally added to
the respective applications by amendment. Attention is also
directed to the statement on page 2 of that decision regarding
reconsideration of patentability at the discretion of the
examiner.
2
CAROFF, Administrative Patent Judge.
JUDGMENT
In a paper entitled “Concession of Priority - Counts 1-4"
(Paper No. 25) filed on June 23, 1998 (sic: July 23, 1998),
Abramovitz et al., the senior party, requests entry of adverse
judgment under 37 CFR § 1.662(a) with respect to counts 1, 2
and 4; whereas Gil et al., the junior party, requests entry of
adverse judgment with respect to count 3.
Accordingly, judgment as to the subject matter of counts
1, 2 and 4 is hereby awarded to Gil et al. Therefore, as to
count 1, Abramovitz et al. are not entitled to their involved
claims 3, 5-7 and 10-13. On this record, Gil et al. are
entitled to their involved claims 2, 5 and 27-28.
As to count 2, Abramovitz et al. are not entitled to3
their involved claims 14-15. On this record, Gil et al. are
Interference No. 103,966
3
entitled to their involved claims 29-30.
Interference No. 103,966
4
As to count 4, Abramovitz et al. are not entitled to
their involved claim 17. On this record, Gil et al. are
entitled to their involved claim 32.
Judgment as to the subject matter of count 3 is hereby
awarded to Abramovitz et al. Therefore, Gil et al. are not
entitled to their involved claim 31. On this record,
Abramovitz et al. are entitled to their involved claim 16.
_____________________________ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
_____________________________ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
_____________________________ )
Administrative Patent Judge )

Interference No. 103,966
5
Attorneys for Gil et al.:
Carlos A. Fisher
Legal Department, T2-2E
ALLERGAN, INC.
P.O. Box 19534
2525 Dupont Drive
Irvine, CA 92623-9534
Attorneys for Abramovitz et al.:
Patent Department
MERCK & CO., INC.
P. O. Box 2000
Rahway, NJ 07065-0907