dissenting.
I agree that the Director has discretion whether or not to declare an interference. The statute, 35 U.S.C. § 135, expressly provides that “Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared.” (emphases added). However, that discretion is not unlimited. It is cabined by the requirement that it not be exercised contrary to the statute under which the Director operates the PTO, and, of particular importance here, the Director must exercise his discretion in a manner that complies with the Patent Office rules of practice.
The Board of Patent Appeals and Interferences here declined to declare an interference between Lilly’s reissue application and the University of Washington’s patent on the ground that a two-way test applies for determining whether the claims presented by the parties create an interference-in-fact, and, under that test, the parties do not claim the same invention. In so holding, the Board relied on its own decision in Winter v. Fujita, 53 USPQ2d 1234 1999 WL 1327616 (Bd.Pat.App. & *1273Int.1999), and its strained interpretation of 37 C.F.R. § 1.601(n) (“Rule 601(n)”) set forth therein. The Board also either failed to consider or chose to ignore the fact that, on the record, Lilly is senior to UW.
I believe the Board’s action constitutes an abuse of discretion because the language of Rule 601 (n) plainly describes a one-way test and does not support a two-way test. While Winter does hold that a two-way test is appropriate, its conclusion, not binding on us, is unsupported by any reasoning. UW and the majority opinion argue that the PTO’s comments in promulgating its interference rules should be considered in our interpretation of the rules, but, when they are contrary to their plain meaning, such comments cannot alter the meaning of the rules.
The Board found that there was no interference-in-fact between claims 1-82 and 84-90 of Lilly’s U.S. Reissue application 09/185,663, on the one hand, and claims 1 and 3 of UW’s issued '529 patent, on the other. Rule 601(j) (i.e., 37 C.F.R. § 1.601©) defines the existence of an interference-in-fact in terms of whether or not the parties claim the “same patentable invention,” a term that is defined in Rule 601(n). Rule 601(n) reads as follows:
Invention “A” is the same patentable invention as an invention “B” when invention “A” is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B” is prior art with respect to invention “A” Invention “A” is a separate patentable invention with respect to invention “B” when invention “A” is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B” is prior art with respect to invention “A.”
(second emphasis added).
In each case, a one-way test is set forth: whether invention A is the same as or is obvious with respect to invention B, assuming B is prior art with respect to A. The rule does not require that B be the same as or obvious with respect to A, or assume that A is. prior art with respect to B. Thus, the rule provides a one-way test, not a two-way test, as the Board erroneously held.
In the ease before us, the parties agree that UW’s claim 3 is patentably distinct from Lilly’s claims 1-82 and 84-90, even though the sequences they claim differ from each other only in two codons out of 419 and yield the same peptide product. Hence, they do not claim the same invention and there is no interference-in-fact with respect to those claims.
As for UW’s claim 1, the Board did not construe that claim to determine whether it is generic or directed to a species. Although Lilly has not asked us to construe claim 1 as a generic claim, it asserts that it was error for the Board not to construe the claim at all. Claim construction is a matter of law and construction of claim 1 is necessary to the resolution of this appeal. Claim 1 is directed to a nucleic acid plasmid or vector comprising cDNA coding for a specified 419 amino acid sequence shown in Figure 3 of the patent. Given the degeneracy of the genetic code, the parties agree, or at least do not contest, that the indicated 419 amino acid sequence can be coded for by more than 1023 different cDNA sequences. Thus, it is clear that claim 1 covers all of those cDNA sequences, and must therefore be construed as generic.
Applying the one-way test clearly set forth by Rule 601(n), UW’s generic claim 1 must be held to be the same patentable invention, not because a genus and a species are the same, but because Rule 601 (n) refers to 35 U.S.C. § 102 after its reference to “same invention,” and thereby indicates that the phrase “same patentable invention” encompasses the concept of “is *1274anticipated by.” Lilly, on the present record, would be the senior party were an interference to be declared. Clearly, the species in Lilly’s prior filed claims anticipates UW’s later-filed generic claim. If an interference were to be declared, UW might antedate Lilly’s claim, in which case UW’s generic claim would remain in force. In that case, however, Lilly’s species claim would also remain, because the Board already found the species to be a separate patentable invention with respect to the prior genus. The interference will seem to have been conducted in vain, but the issues will have been settled in accordance with the statutory procedure for resolving a possible conflict of priority between an application (albeit a reissue application) and a patent. If UW does not antedate Lilly’s species, then UW’s generic claim will be invalid under 35 U.S.C. § 102(g), and the matter will have been settled by the optimal tribunal.
The majority and the Director urge that upholding the Board’s decision would avoid unnecessary interferences, which it is said are a burden on the Patent Office. The answer to that assertion is that it is the job of the Office, which has the expertise to evaluate contending claims for patent, to determine which of those claims have priority and should issue as patents. It is clearly more efficient for even an overburdened Patent Office to make determinations in the arcane world of interferences than for the overburdened courts to do so.
In the present case, affirmance may well lead to a prolonged action in a district court unaccustomed to evaluating interference issues involving cDNA sequences, whereas reversal would result in the more experienced Patent Office determining the respective rights of the parties. Such a determination would likely not be overturned by the courts, see In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed.Cir.2000), thereby leaving the first and most important determination of a complex factual matter in the tribunal best able to carry it out.
In summary, the Board abused its discretion by interpreting Rule 601(n) to require a two-way test for determining when separate patentable inventions are involved and by failing to consider the effective filing dates of the respective parties. I would therefore reverse the Board’s decision finding no interference-in-fact.