2304.04(a) Interfering Claim Already in Application [R-08.2017]
If the applicant already has a claim to the same subject matter as a claim in the application or patent of another inventor, then there is no need to require the applicant to add a claim to have a basis for an interference.
The examiner may invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). An applicant may be motivated to do so in order to present its views on how the interference should be declared.
If the applicant does not suggest an interference, then the examiner should work with an Interference Practice Specialist (IPS) to suggest an interference to the Board. The suggestion should include an explanation of why at least one claim of every application or patent defines the same invention within the meaning of 37 CFR 41.203(a). See MPEP § 2301.03 for a discussion of interfering subject matter. The examiner must also complete Form PTO-850.
The examiner should be prepared to discuss why claims interfere, whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art, and whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice. The IPS may require the examiner to prepare a memorandum for the Board on any of these subjects. The IPS may require the examiner to participate in a conference with the Board to discuss the suggested interference.