904 F.2d 45
17 U.S.P.Q.2d 1175
Unpublished DispositionNOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent.  This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.WINKLER et al., Appellants,v.GUGLIELMINO, Appellee.
No. 89-1571.
United States Court of Appeals, Federal Circuit.
May 9, 1990.

Before NIES, ARCHER and MAYER, Circuit Judges.
PER CURIAM.

DECISION

1
James L. Winkler and John G. Juracich (Winkler) appeal a decision of the Patent and Trademark Office Board of Patent Appeals and Interferences in an interference proceeding awarding priority to the junior party, Guglielmino, and holding that Winkler, the senior party, is not entitled to a patent containing a claim corresponding to the interference count because he admitted the subject matter of the count was unpatentable.  Guglielmino v. Winkler, 11 USPQ2d 1389 (Bd.Pat.App. & Int.1989).  We vacate and remand.    No costs.

OPINION

2
There is no disagreement about the facts material to this appeal.  Only the legal consequences of the statements made before the Patent and Trademark Office in the interference proceeding are in dispute.  Therefore, we review the decision of the Board of Patent Appeals and Interferences as a matter of law.


3
To determine whether a claim would have been unpatentable over a reference, two inquiries must be made in this case:  first, whether the reference discloses or renders obvious the subject matter that is claimed, 35 U.S.C. Secs. 102, 103;  second, whether the reference is "prior" art under 35 U.S.C. Sec. 102.  Winkler may have admitted the former, but he did not admit the latter.  Because he did not admit all of the facts necessary to conclude that his claim 15 was unpatentable, it was error for the board to draw that conclusion and put the burden on him to demonstrate that the alleged basis for unpatentability did not apply.  The rules of practice in interferences, 37 C.F.R. Secs. 1.601-690, impose no such duty.

