08430286 (B.P.A.I. May. 7, 1999)

UHL et al.v.YU

Board of Patent Appeals and InterferencesMay 7, 1999

08430286 (B.P.A.I. May. 7, 1999)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION and is not binding precedent of the Board. Fi le d by : Trial Section Merits Panel Box Interference Washington, D.C. 20231 Telephone: 703-308-9797 Facsimile: 703-305-0942 35 U.S.C. Â§ 135(c) Notice: Failure to file a copy of any agreement regarding the termination of this proceeding may render the agreement and any resulting patents Paper No. 38 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ GEORGE UHL et al., Junior Parties (Patent Applications 08/188,275 and 08/430,286), v. LEI YU, Senior Party (Patent Application 08/120,601). _______________ Consolidated Interference Nos. 104,230 and 104,231 _______________ Before SCHAFER, LEE and TORCZON, Administrative Patent Judges. TORCZON, Administrative Patent Judges. JUDGMENT (PURSUANT TO 37 CFR Â§ 1.640) Upon consideration of the record of these consolidated interferences, particularly the decision granting Yu's preliminary motion for no interference in fact ('230 Paper No. 36; '231 Paper No. 29), it is Interference Nos. 104,230, 104,231 Page 2 Uhl v. Yu ORDERED that Interference No. 104,230 be terminated as provided in 37 CFR Â§ 1.661 because there is no interference in fact; FURTHER ORDERED that Interference No. 104,231 be terminated as provided in 37 CFR Â§ 1.661 because there is no interference in fact; FURTHER ORDERED that there is no judgment on priority for the sole count of Interference No. 104,230 because there is no interference in fact; FURTHER ORDERED that there is no judgment on priority for the sole count of Interference No. 104,231 because there is no interference in fact; FURTHER ORDERED that, based on the record before us, Yu is entitled to a patent containing claims 1, 2, 4, 8, 13-15, 19-22, 25, 28, 31, and 32 of his involved 08/120,601 patent application; FURTHER ORDERED that, based on the record before us, Uhl is entitled to a patent containing claims 2-4 and 6-8 of their involved 08/430,286 patent application; FURTHER ORDERED that, based on the record before us, Uhl is entitled to a patent containing claims 1-3, 7, 10, 11, 13, 22-27, and 29-34 of their involved 08/188,275 patent application; Interference Nos. 104,230, 104,231 Page 3 Uhl v. Yu FURTHER ORDERED that the preliminary statements of the parties be returned unopened; and FURTHER ORDERED that the parties review their obligations under 35 U.S.C. Â§ 135(c) to file all agreements or understandings related to the termination of these interferences before the termination of these interferences as defined in 37 CFR Â§ 1.661. RICHARD E. SCHAFER Administrative Patent Judge JAMESON LEE Administrative Patent Judge RICHARD TORCZON Administrative Patent Judge BOARD OF PATENT APPEALS AND INTERFERENCES Interference Nos. 104,230, 104,231 Page 4 Uhl v. Yu Attorneys for (real parties in interest United States government and American Home Products): Robert B. Jones, Esq. Richard A. Kaba, Esq. FITCH, EVEN, TABIN & FLANNERY 135 S LASALLE ST STE 900 CHICAGO IL 60603-4277 Fax: 312-372-7848 Attorneys for Yu (real parties in interest Indiana University, Advanced Research & Technology Institute (assignee); United States government (licensee); and Adolor Corp. (licensee)): Mark B. Wilson, Esq. ARNOLD, WHITE & DURKEE 1900 ONE AMERICAN CTR 600 CONGRESS AVE AUSTIN TX 78701 Fax: 512-474-7577

UHL et al. V. YU