Steffelv.Schofield et al.

Board of Patent Appeals and Interferences

Apr 25, 2011

11074521 (B.P.A.I. Apr. 25, 2011)

BoxInterferences@uspto.gov
Tel: 571-272-4683

Paper 96
Filed: 25 April 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

HANS-CLEMENS STEFFEL
Junior Party
(Patent No. 6,703,925),

v.

KENNETH SCHOFIELD and MARK L. LARSON
Senior Party
(Application No. 11/074,521).
_______________

Patent Interference No. 105,736 (SCM)
(Technology Center 2600)
_______________

Before JAMESON LEE, SALLY GARDNER LANE and
SALLY C. MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
JUDGMENT – Bd. R. 127 1
The motions filed during the preliminary motions phase of the 2
interference have been decided. (Paper 95). Steffel did not file a priority 3
statement. Bd.R. 204(a)(3). Therefore there will not be a priority phase of 4
the interference. 5
It is 6
2
ORDERED that judgment as to the subject matter of Count 1 (Paper 1
1 at 4) is entered against Steffel; 2
FURTHER ORDERED that claims 1-16 of Steffel’s involved Patent 3
6,703,925, which correspond to Count 1, are CANCELLED, 4
35 U.S.C. § 135(a); 5
FURTHER ORDERED that the parties shall note the requirements 6
of 35 U.S.C. § 135(c) and Bd. R. 205; and 7
FURTHER ORDERED that a copy of this judgment be entered in 8
the administrative records of the involved Steffel Patent 6,703,925 and 9
Schofield Application 11/074,521. 10
3
cc (via electronic mail):
Attorney for Steffel:
David J. Simonetti, Esq.
Matthew J. Schmidt, Esq.
REISING ETHINGTON PC
755 W. Big Beaver Road, Suite 1850
Troy, MI 48084
Tel: 248.689.3500
Email: simonelli@reising.com
Email: schmidt@reising.com

Attorney for Schofield:

Terence J. Linn, Esq.
Timothy A. Flory, Esq.
VAN DYKE, GARDNER, LINN
& BURKHART LLP
2851 Charlevoix Drive SE, Suite 207
Grand Rapids, MI 49546
Tel: 616.975.5500
Email: linn@vglb.com
Email: flory@vglb.com
BoxInterferences@uspto.gov Paper 95
Tel: 571-272-4683 Filed: 25 April 2011

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

HANS-CLEMENS STEFFEL
Junior Party
(Patent No. 6,703,925),

v.

KENNETH SCHOFIELD and MARK L. LARSON
Senior Party
(Application No. 11/074,521).
_______________

Patent Interference No. 105,736 (SCM)
(Technology Center 2600)

Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION –MOTIONS – Bd.R. 125
A. Introduction 1
The purpose of an interference is to determine priority of invention. Steffel 2
did not file a priority statement and therefore does not contest priority. Rather, 3
Steffel filed two motions, either of which if granted, would deprive Schofield 4
standing to be in the interference. Steffel’s two motions are the subject of this 5
Interference No. 105,736

2
decision. 1
Steffel seeks judgment against Schofield on the basis that all of Schofield’s 2
involved claims 93-131 are unpatentable under the written description and 3
enablement requirements of 35 U.S.C. § 112, ¶ 1. (Steffel Motion 1; Paper 44). 4
We DENY-IN-PART and DISMISS-IN-PART Steffel Motion 1. 5
Steffel seeks judgment against Schofield on the basis that all of Schofield’s 6
involved claims 93-131 are unpatentable under of 35 U.S.C. § 135(b)(2). (Steffel 7
Motion 2; Paper 45). 8
We DENY Steffel Motion 2. 9
B. The Interfering Subject Matter 10
The interfering subject matter generally relates to a monitoring device for 11
vehicles that includes a camera arranged behind a rear view mirror. Count 1, the 12
sole count, is Steffel claim 1 or Schofield claim 93. (Paper 1 at 4). Schofield 13
claim 93 is as follows: 14
A monitoring device for vehicles, said monitoring device 15
comprising: 16
a housing; 17
at least one electrochromic mirror glass arranged in said 18
housing so as to have a front side facing an observer; 19
said at least one electrochromic mirror glass comprising a 20
reflective layer being reflective in the visible spectral range of light; 21
and 22
at least one camera arranged behind said reflective layer in a 23
viewing direction viewed from said front side, wherein said at least 24
Interference No. 105,736

3
one camera takes images through the reflective layer wherein said 1
electrochromic mirror glass has an electrochromic layer and wherein 2
said reflective layer is arranged behind said electrochromic layer in 3
said viewing direction. 4
C. Findings of fact 5
1. Steffel is involved on the basis of patent 6,703,925, granted 9 March 6
2004, based on application 09/771,140, filed 26 January 2001. 7
2. Schofield is involved on the basis of application 11/074,521, filed 8 8
March 2005. 9
3. Schofield has been accorded benefit for the purpose of priority of several 10
earlier applications (Paper 1 at 4-5), resulting in Schofield having an earliest 11
constructive reduction to practice date of 7 June 1995. 12
4. Steffel did not file a priority statement. 13
5. Steffel real party in interest is SMR Patents S.a.r.l. (Paper 9). 14
6. Schofield real party in interest is Magna Mirrors of America, Inc. (Paper 15
4). 16
7. Count 1 is as follows : 17
Claim 1 of Steffel’s patent 6,703,925 18
or 19
Claim 93 of Schofield’s application 11/074,521 20
8. The claims of the parties are : 21
Steffel : 1-16 22
Schofield : 93-135 23
9. The claims of the parties which correspond to Count 1 are : 24
Interference No. 105,736

4
Steffel : 1-16 1
Schofield : 93-131 2
10. The claims of the parties which do not correspond to Count 1, and 3
therefore are not involved in the interference are: 4
Steffel : none 5
Schofield : 132-135 6
D. Steffel Motion 1 7
Steffel moves for judgment against Schofield on the basis that Schofield’s 8
involved claims 93-131 are unpatentable under 35 U.S.C. § 112, first paragraph, 9
based on the written description requirement and the enablement requirement. 10
(Paper 44). To be sufficient, a motion must provide a showing, supported with 11
appropriate evidence, such that, if unrebutted, it would justify the relief sought. 12
The burden of proof is on the movant. Bd.R. 208(b). 13
The count is Schofield independent claim 93 or Steffel independent claim 1. 14
(Paper 1 at 4). Schofield independent claims 109, 117 and 125 correspond to the 15
count. For purpose of Steffel Motion 1, Schofield’s various dependent claims 16
stand or fall with their respective independent claim. (Paper 19 at 2:11-13; Paper 17
44 at 2:2-7). Schofield needs one claim to be in interference with Steffel, e.g., one 18
of Schofield independent claims 93, 109, 117 or 125 to survive the written 19
description and enablement attacks. Therefore, if Steffel fails to satisfy its burden 20
with respect to one of Schofield’s independent claims, the motion will be denied 21
with respect to that one claim and dismissed without consideration of Steffel’s 22
arguments as to all of Schofield’s other claims. 23
For reasons that follow, Steffel has failed to sufficiently demonstrate that 24
Interference No. 105,736

5
Schofield claim 109 is unpatentable under 35 U.S.C. 112, ¶ 1 based on either the 1
written description or enablement requirements. The focus of our analysis is on 2
Schofield claim 109. 3
Schofield claim 109 is reproduced below with the pertinent language in 4
italics. 5
A monitoring device for a vehicle, said monitoring device 6
comprising: 7
an interior review mirror assembly mountable to a portion of a 8
vehicle, said review mirror assembly comprising a housing and a 9
variable reflectance mirror element; 10
the reflectance level of said mirror element being variable in 11
response to a change in a drive signal applied to said mirror element; 12
said mirror element comprising a reflective layer that is 13
reflective to visible light incident thereon; and 14
at least one imaging sensor arranged behind said mirror element 15
and having a field of view through said mirror element in a generally 16
rearward direction with respect to the vehicle, wherein said at least 17
one imaging sensor captures images through said reflective layer of 18
said mirror element. 19
20
Steffel does not present arguments for the separate Schofield independent 21
claims. Rather, Steffel argues all of Schofield’s independent claims together. This 22
approach is problematic because the independent claims are different. Claim 109, 23
for example, does not recite an electrochromic layer, despite Steffel’s argument 24
Interference No. 105,736

6
that all of Schofield’s claims corresponding to Count 1 require a camera behind an 1
electrochromic layer. (See, e.g., Paper 44 at 8:5-8). Indeed, one premise behind 2
Steffel’s written description argument is that the claims require (1) a camera or 3
photosensor array, a reflective coating or layer, and an electrochromic layer, and 4
(2) that the camera or photosensor array takes images through both the reflective 5
layer and the electrochromic layer. (See, e.g., Paper 44 at 10:20 to 11:1). 6
While Schofield claim 93 does require a reflective layer and an 7
electrochromic layer, claim 109 does not.1 Moreover, claim 109 does not recite 8
that the sensor array take images through two layers of materials as Steffel argues. 9
Claim 109 requires that the mirror element comprise a reflective layer and that the 10
at least one imaging sensor is arranged behind the mirror element (comprising the 11
reflective layer). Claim 109 further recites that the at least one imaging sensor 12
captures images through the reflective layer of the mirror element. There is no 13
other layer or coating claimed in claim 109. Thus, Steffel’s argument that there is 14
no support in the Schofield specification for “the claims of Count 1 because never 15
in Schofield is the camera or photosensor array truly taking images through both 16
the reflective coating and the electrochromic layer” (Paper 44 at 10:20-22) is not 17
persuasive. The argument is not commensurate in scope with the limitations of 18
Schofield claim 109. 19
The holding in Agilent2 does not change our analysis despite Steffel’s 20

1 Steffel did not request to file a motion to undesignate Schofield claim 109 from
Count 1. Steffel did not request to file a motion to redefine the interfering subject
matter by proposing a new count formed by Schofield claim 109, for example.
(Papers 18 and 20).
2 Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1374 (Fed. Cir.
2009).
Interference No. 105,736

7
argument that non-copied claim 109 should be interpreted just as copied claim 93 1
is interpreted. (Paper 44 at 5:5-10). Claim 109 is different from claim 93 and does 2
not require an electrochromic layer or a similarly claimed second layer. Steffel has 3
not directed us to where in Agilent that our reviewing court has instructed us to 4
ignore the plain meaning of a non-copied claim, but instead interpret the non-5
copied claim by importing unclaimed terms from a copied claim. The argument 6
simply makes no sense and Steffel has not presented the argument in a cogent 7
manner.3 8
Steffel also argues, with respect to all of the Schofield independent claims, 9
that Schofield’s specification does not provide written description support for a 10
photosensor array that takes images through the reflective layer. (Paper 44 at 6:2-11
3). Schofield claim 109 similarly recites an imaging sensor that captures images 12
through the reflective layer and so the argument is at least commensurate in scope 13
with claim 109. 14
Steffel argues that claim 109 requires a continuous reflective layer made of 15
one and the same material. (See, e.g., Paper 44 at 8-10). Claim 109 is not so 16
restrictive. Claim 109 does not recite that the reflective layer be continuous or 17
made of one type of material. We understand Steffel to arrive at its proposed claim 18
interpretation for Schofield’s claims by looking to Steffel’s specification, 19
particularly at Steffel’s disclosed embodiments. In particular, Steffel directs 20
attention to its Figure 1, which shows a continuous reflective layer across the entire 21

3 Although we deny Steffel’s motion 1 without considering Schofield’s opposition
or Steffel’s reply, we note, that in its reply, Steffel appears to agree that Schofield
claim 109 does not require an electrochromic layer (Paper 57 at 4:1-2; “And while
claims 109 and 117 do not claim an electrochromic layer, they both require the
Interference No. 105,736

8
backside of the electrochromic mirror glass. We disagree with Steffel that we 1
should interpret Schofield claim 109 in light of Steffel’s specification. Claim 109 2
is not a copied claim and includes claim elements that are not claimed by Steffel 3
and that are not disclosed in Steffel’s specification. (See, e.g., Paper 57 at 26; FFs 4
51 and 52 admitted). It simply would not make sense to interpret some terms in 5
light of Steffel’s specification, but interpret other terms in light of Schoflield’s 6
specification. 7
In any event, even if we interpret “reflective layer” in light of Steffel’s 8
specification, we disagree with Steffel that the term “reflective layer” means one 9
continuous layer made of the same material. Steffel has not directed us to where in 10
its specification it specifically defines reflective layer. As such, that term has the 11
meaning that a person of ordinary skill in the art would understand it to mean. 12
Steffel does not direct us to supporting evidence that would explain that one of 13
ordinary skill in the art would understand a reflective layer to mean a continuous 14
layer made of the same material. Notwithstanding the fact that certain Steffel 15
embodiments describe a continuous reflective layer made of the same material, we 16
disagree that we are required to interpret Schofield claim 109 so as to import those 17
features into claim 109. Claims are to be interpreted in light of the specification 18
without importing limitations into the claims. This is so, even if Steffel is correct 19
that the term “reflective layer” must be interpreted in light of Steffel’s 20
specification. Accordingly, Schofield claim 109 does not require a continuous 21
reflective layer made of the same material. 22
Steffel’s remaining arguments are based on the incorrect claim interpretation 23

camera to image through the reflective layer.” Emphasis in original).
Interference No. 105,736

9
that Steffel proposes. Specifically, Steffel argues that Schofield’s disclosed 1
embodiments with a hole in the reflective layer that is filled with a different 2
reflective layer does not provide written description support for the “reflective 3
layer.” Schofield Fig. 1a is reproduced below: 4
5
6
Schofield shows in Fig. 1a, a photosensor 2, e.g., imaging sensor, facing 7
rearwardly of the mirror 1. (Ex. 2001 at 19:1-5). The mirror element 1a includes a 8
reflective layer. A hole is provided in the reflective layer to allow the imaging 9
sensor to image through the reflective layer. (Ex. 2001 at 20:16-25). However, “a 10
reflective surface is maintained within the hole to both preserve the cosmetic 11
appearance of the assembly as viewed by the driver and to maximize the reflective 12
surface.” (Ex. 2001 at 20:35 to 21:1). Steffel has not sufficiently explained why 13
the hole that is also filled with a reflective surface (e.g., layer), does not, along with 14
the original reflective surface constitute a reflective layer. Steffel relies on the 15
declaration of Richard Raber (Raber) in support of its motion. We have considered 16
Raber’s declaration, but do not give it substantial weight because Raber does not 17
provide a sufficient factual basis for the statements he makes. For example, Raber 18
declares: 19
22. Nowhere does Schofield state the sensor is behind the reflective 20
Interference No. 105,736

10
layer of the mirror. Schofield does mention that it can cover the hole 1
with a different type of reflective layer (p. 20, line 35 – p. 21, line 22), 2
but it cannot cover the hole with the same reflective layer that it uses 3
for the working reflective surface. (Ex. 2005). 4
5
Although Raber continues to explain why the described reflective layer 6
materials in Schofield’s specification are not the same, he does not sufficiently 7
explain why it matters. His testimony appears to be based on the erroneous 8
assumption that the Schofield claims require the reflective layer to be made of only 9
one continuous material. As already explained, however, Schofield claim 109 is 10
broad and encompasses a “reflective layer” that can be discontinuous and made of 11
more than one material. Accordingly, we are not persuaded by Steffel’s arguments 12
that the description in Schofield’s specification of the embodiment of the filled 13
hole of reflective material does not provide written description support for the 14
reflective layer of Schofield claim 109. 15
Lastly, we note that even if Schofield claim 109 requires a reflective layer 16
that is made of one continuous material, Steffel has not sufficiently explained why 17
Schofield’s alternative embodiment does not provide descriptive support for such 18
an interpretation. The alternative embodiment provides: 19
In particular, an interference filter known as a long-wave pass filter or 20
cold mirror reflects visible light, transmits infrared illumination and 21
looks like the normal silvered mirrors typically used in the rearview 22
mirror 1. Unlike cold mirrors, however, silvered mirrors reflect near 23
infrared illumination. Since the cold mirror resembles the silvered 24
mirror in the rearview mirror 1, it may be used to replace a section or 25
even all of the silvered mirror. (Ex. 2001 at 38:16-24; emphasis 26
added). 27
28
While Raber seems to recognize this passage (Ex. 2005 at ¶ 18), he does not 29
Interference No. 105,736

11
sufficiently explain why the described cold mirror embodiment does not provide 1
written description support for the claim 109 requirement of a reflective layer, even 2
assuming the claim requires a continuous layer of the same material. Moreover, 3
we are not persuaded by Steffel’s argument that the alternative embodiment 4
described above still requires the use of a hole in the reflective layer. We do not 5
agree, since Steffel has not sufficiently demonstrated, with supporting evidence 6
that one of ordinary skill in the art would understand this to be the case. Nowhere 7
in the above passage, describing a separate embodiment, is there mention of a hole. 8
The above passage explains that the cold mirror may be used to replace all of the 9
silvered mirror. We have considered Steffel’s arguments at page 10, lines 12-19, 10
that because the same embodiment describes the use of a supplemental source of 11
illumination that that means a hole is required, but do not find such arguments 12
persuasive. Steffel does not sufficiently explain the argument, not direct us to 13
evidence to support the assertions it makes. Argument of counsel cannot take the 14
place of evidence. See, Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. 15
Cir. 1997) (Argument of counsel cannot take the place of evidence lacking in the 16
record). For these reasons, Steffel has not sufficiently demonstrated why a person 17
of ordinary skill in the art would understand that a hole, with respect to the cold 18
mirror embodiment, would be necessary. 19
For all of the above reasons, Steffel has failed to sufficiently demonstrate 20
that Schofield independent claim 109, which corresponds to the count, is 21
unpatentable under the written description requirement of 35 U.S.C. § 112, first 22
paragraph. 23

Interference No. 105,736

12
Enablement 1
Steffel’s arguments regarding enablement are similar to its arguments with 2
respect to written description support. First, as already explained, claim 109 does 3
not require a camera or photosensor that takes images through a reflective layer 4
and an electrochromic layer. Claim 109 does not recite an electrochromic layer as 5
already explained. 6
Steffel’s remaining arguments are based on the notion that claim 109 7
requires a continuous reflective layer that is made of the same material. Steffel 8
argues to change the reflective coating to avoid the hole in the reflective layer, 9
described in Schofield’s specification, would require endue experimentation. 10
(Paper 44 at 12:13-19). 11
We have already explained why Schofield claim 109 does not require a 12
continuous reflective layer that is made of the same material. Thus, all of Steffel’s 13
arguments in that regard necessarily fail. In any event, Steffel does not explain 14
why the embodiment that describes a cold mirror (Ex. 2001 at 38:16-24) does not 15
enable the claimed invention even if Schofield claim 109 does require a continuous 16
reflective layer made of the same material. We have reviewed Raber’s testimony. 17
He does not explain why one of ordinary skill in the art would not readily 18
understand the type of material that would be used for the “cold mirror” 19
embodiment described in Schofield’s specification. 20
Various factors are to be considered to support a conclusion that a disclosure 21
would require undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 22
1988). One of the Wands factors is the state of the prior art at the time of the 23
invention. It is axiomatic that a specification need not teach, and preferably omits, 24
Interference No. 105,736

13
what is well known in the art. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1
1524, 1534 (Fed. Cir. 1987). Moreover, describing the function of an apparatus 2
may be sufficient where the structure is conventional and can be determined 3
without undue experimentation. In re Gunn, 537 F.2d 1123, 1127 (CCPA 1976). 4
In connection with his contentions that Schofield’s specification does not 5
provide enough information to enable the claimed reflective layer, Raber does not 6
meaningfully discuss or explain the state of the prior art at the time of the 7
invention. It is not our place, in the first instance, to review the prior art references 8
that are of record, determine what they describe, and determine whether the 9
references do or do not demonstrate what was well known in the art as far as 10
reflective layers are concerned. Ernst Haas Studio, Inc. v. Palm Press, Inc. 164 11
F.3d 110, 112 (2d Cir. 1999) (declining invitation to scour record to make out a 12
party’s case for it). “Judges are not like pigs, hunting for truffles buried in briefs.” 13
United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). 14
Raber does not meaningfully discuss what the prior art references generally 15
taught or was known about reflective layers such as cold mirrors. Nor does he 16
explain the general knowledge the person of ordinary skill in the art would have 17
had regarding reflective layers such as cold mirrors. We do not give Raber’s 18
testimony substantial weight that what is described in the Schofield specification is 19
not enough, since Raber fails to provide a sufficient factual basis for that 20
conclusion. Our rules state that expert testimony that does not disclose the 21
underlying facts or data on which an opinion is based is entitled to little or no 22
weight. 37 C.F.R. § 41.158(a). See also Rohm and Haas Co. v. Brotech Corp., 127 23
F.3d 1089, 1092, (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence 24
Interference No. 105,736

14
requires the finder of fact to credit the unsupported assertions of an expert 1
witness). For the reasons stated above, Raber’s testimony is not entitled to 2
substantial weight and therefore, Steffel has failed to prove, by a preponderance of 3
the evidence that it is entitled to the requested relief. 4
For all of the above reasons, Steffel has failed to sufficiently demonstrate 5
that Schofield independent claim 109, which corresponds to the count, is 6
unpatentable under the enablement requirement of 35 U.S.C. § 112, first paragraph. 7
Steffel Motion 1 is DENIED-IN-PART and DISMISSED-IN-PART. 8
E. Steffel Motion 2 9
Steffel moves for judgment on the basis that all of Schofield’s claims 10
involved in the interference are barred by 35 U.S.C. § 135(b)(2). (Paper 45 at 1:2-11
3). According to § 135(b)(2): 12
A claim which is the same as, or for the same or substantially the 13
same subject matter as, a claim of an application published under 14
section 122(b) of this title may be made in an application filed after 15
the application is published only if the claim is made before 1 year 16
after the date on which the application is published. 17
The Board has construed §135(b)(2) to bar a claim only if the claim of a 18
published application ultimately issues as published or issues with no material 19
changes. Ryan v. Young, 2008 WL 577435, Interference 105,504 and 105,505, 20
Paper 116 at 43 (BPAI 2008). An example of what constitutes a material change is 21
when a claim has been amended to include a limitation such as to avoid prior art 22
cited by the Examiner. Parks v. Fine, 773 F.2d 1577, 1579 (Fed. Cir. 1985); In re 23
Berger, 279 F.3d 975, 982-83 (Fed. Cir. 2002). We adopt the rationale provided in 24
Ryan. 25
Interference No. 105,736

15
Steffel is apparently aware of the holding in Ryan (see, e.g., Paper 45 at 3:7-1
10) and does not argue against the application of that decision. Rather, Steffel 2
argues that: 3
Even though claim 1 of Steffel’s published ‘140 application was 4
amended during prosecution, the amendments essentially only 5
incorporated into claim 1 the limitations from claim 4 as published in 6
Steffel’s ‘140 application. In more detail, claim 4 of Steffel’s 7
published ‘140 application was dependent upon both claims 3 and 1, 8
and claim of Steffel’s ‘925 patent includes the elements from claims 9
1, 3 and 4 of Steffel’s ‘140 application. Because Schofield copied the 10
claims from Steffel’s ‘925 patent, Schofield’s involved claims 11
likewise are essentially the same as the claims in Steffel’s published 12
‘140 application. (Paper 45 at 9:11-17). 13
14
The above-quoted text suggests that Steffel’s ‘140 published application 15
claim 4 issued as published (as Steffel patent claim 1) or issued with no material 16
changes. That is not the case. Steffel’s involved claim 1, which is the only Steffel 17
independent claim, has a limitation not found in any of the Steffel published 18
application claims. Steffel’s involved claim 1 includes “wherein said at least one 19
camera takes images through the reflective layer.” That limitation was clearly 20
added during prosecution of the Steffel application to overcome the Examiner’s 21
rejection of Steffel’s claim based on prior art of record. (Ex. 1023 and 1024). 22
Steffel’s silence with respect to this limitation leads us to conclude that Steffel has 23
not sufficiently demonstrated that the addition of the limitation was not a material 24
one. Accordingly, Steffel has failed to sufficiently demonstrate that 135(b)(2) bars 25
Schofield’s claims which also include this limitation. Because 135(b)(2) does not 26
bar Schofield’s claims as explained, we need not and do not consider Steffel’s 27
remaining arguments. 28
Interference No. 105,736

16
G. Order 1
It is 2
ORDERED that Steffel Motion 1 is DENIED-IN-PART and 3
DISMISSED-IN-PART; and 4
FURTHER ORDERED that Steffel Motion 2 is DENIED. 5
Interference No. 105,736

17
cc (via electronic mail):

Attorney for Steffel:

David J. Simonetti, Esq.
Matthew J. Schmidt, Esq.
REISING ETHINGTON PC
755 W. Big Beaver Road, Suite 1850
Troy, MI 48084
Tel: 248.689.3500
Email: simonelli@reising.com
Email: schmidt@reising.com

Attorney for Schofield:

Terence J. Linn, Esq.
Timothy A. Flory, Esq.
VAN DYKE, GARDNER, LINN
& BURKHART LLP
2851 Charlevoix Drive SE, Suite 207
Grand Rapids, MI 49546
Tel: 616.975.5500
Email: linn@vglb.com
Email: flory@vglb.com