Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FUJIIE V. VERHAGEN
Interference No. 101,688
August 29, 1988
April 5, 1988
Application of Kuzuhiko Fujiie filed July 31, 1984, Serial No. 636,288. Accorded Benefit of Japanese Patent Application Serial No. 2695/84, filed January 12, 1984.
Application of Johannes P.C.M. Verhagen filed November 28, 1984, Serial No. 675,498. Accorded benefit of Serial No. 617,068 filed June 4, 1984, and Netherlands Application No. 8303836, filed November 8, 1983.
James Van Santen, Lewis T. Steadman, John D. Simpson, William C. Stueber, William J. Morris, P. Phillips Connor, Marvin Moody, Dennis A. Gross, Edward A. Lehman, Charles F. Meroni, Jr., John H. Sherman, Otto R. Krause, Marvin A. Henrickson, Andrew F. Zikas, James D. Hobart, John W. Klooster, Brett A. Valiquet, Steven H. Noll, Kevin W. Guynn, Thomas I. Ross, J. Arthur Gross, Richard J. Schwartz and Charles M. Lindrooth for Fujiie.
Thomas A. Briody, Jack Oisher, David R. Treacy, F. Brice Faller for Verhagen.
Before Serota, Chairman, and Urynowicz and Boler, Examiners-in-Chief
James R. Boler
This interference involves an application of Fujiie, assigned to Sony Corporation, a corporation of Japan, and an unassigned application of Verhagen. The interference initially included a third party Steven C. Sims. However, judgment was entered against Sims in Paper No. 29.
The count in issue reads as follows:
In an optical disk player of the type in which a support member on which an optical pickup and a disk rotating mechanism are located is mounted on a main support member via a vibration absorbing mechanism, the improvement which comprises a lock mechanism for preventing movement of said support member relative to said main support member, and means operating said lock mechanism to fix said lock mechanism in response to a loading or unloading operation of a disk onto or from a disk table constituting said disk rotating mechanism or in response to relative movement of said optical pickup to the disk loaded on said disk table for accessing to the disk.
The claims of the parties which correspond to this count are:
Fujiie: 1 to 11
Verhagen: 18, 19, 4/19, 22-29
In response to an order to show cause (Paper No. 27), Fujiie requested (Paper No. 28) that the case be set for final hearing to consider the matter raised in his motion to dissolve (sic, for judgment) under Rule 633(a) [FN1] as to the party Verhagen (Paper No. 16). Rule 655(a) provides that " [a]ll interlocutory orders shall be presumed to be correct and the burden of showing manifest error or an abuse of discretion shall be on the party attacking the order."
The above motion was dismissed by the Examiner-in-Chief (EIC) on the ground that it was not provided for in the rules. In the motion, Fujiie stated that the interference should be dissolved because Verhagen does not have support for the count. Since Rule 633(a) does not provide for motions to dissolve, the motion was treated as a motion for judgment (MPEP, Section 2333). Rule 633(a) provides that a party may file a "motion for judgment on the ground that an opponent's claim corresponding to the count is not patentable to the opponent." The EIC pointed out that the rule does not provide for a motion for judgment on the ground that a party lacks support for the count. Fujiie did not refer to any limitation in any claim of Verhagen corresponding to the count that purportedly lacked support under 35 USC 112, first paragraph, in Verhagen's disclosure. The EIC stated that the question of whether Verhagen had support for limitations which were not in his claims corresponding to the count was moot, cited Squires v. Corbett, 560 F.2d 424, 194 USPQ 513 (CCPA 1977) and dismissed the motion.
*2 In the brief, Fujiie continues to argue that Verhagen does not have support for the count. On page 5, he states that "the question presented is whether the (Verhagen) applications provide a means operating a lock mechanism to fix a support to the main support member in response to relative movement of said optical pickup to the disk loaded on said disk table for accessing to the disk." The problem with Fujiie's argument is that none of Verhagen's claims corresponding to the count include the limitation "in response to relative movement of said optical pickup ... for accessing to the disk." The count is generic and Verhagen discloses and claims at least one species falling within the count, i.e., the means operating the lock mechanism to fix the support member to the main support member in response to loading or unloading of a disk onto or from a disk table constituting a disk rotating mechanism. The count is merely a vehicle for contesting priority, which in the opinion of the Commissioner effectively circumscribes the interfering subject matter, thereby determining what evidence will be regarded as necessary on the issue of priority. The "count" as distinguished from a party's "claim" need not be patentable to either party in the sense that it is fully supported by either party's disclosure. Squires, supra., 194 USPQ 519.
In declaring the interference, the primary examiner deemed Fujiie's generic claims and Verhagen's species claims to be drawn to the same patentable invention. The party who is first to reduce to practice an embodiment falling within the count is entitled to prevail in the interference. Weil v. Fritz, 572 F.2d 856, 196 USPQ 600, n. 16 (CCPA 1978). Verhagen's motion for benefit of his Netherlands application No. 8303836, filed November 8, 1983 (Paper No. 23) was not opposed and was granted in Paper No. 27. Since Fujiie did not oppose Verhagen's motion for benefit, he is not entitled to contend at final hearing that the disclosure therein does not constitute a constructive reduction to practice of the invention in issue (Rule 655(b)). Interference counts are given the broadest reasonable interpretation possible. DeGeorge v. Bernier, 768 F.d 1318, 226 USPQ 758, 760 (Fed.Cir.1985). Fujiie's contention that the word "or" in the phrase "rotating mechanism or in response" should be interpreted to mean "and" is a narrow contrived interpretation rather than the broadest reasonable interpretation, in our view. Fujiie is involved in this interference on an application and was free to propose other language for the count but declined to do so. Accordingly, we hold that the EIC's decision was correct and Verhagen is entitled to judgment on the basis of his earlier effective filing date.
Judgment as to the subject matter in the count in issue is hereby awarded to Johannes P.C.M. Verhagen, the senior party. Based on the record before us, he is entitled to a patent containing claims 18, 19, 4/19 and 22 to 29 corresponding to the count. Kazuhiko Fujiie, the junior party, is not entitled to a patent containing claims 1 to 11 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Stanley M. Urynowicz, Jr.
James R. Boler
FN1. 37 CFR 1.633(a).