Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
MYERS ET AL.
Patent Interference No. 101,542
December 15, 1986
Before Torchin, Smith, R. and Sofocleous
Before us for consideration is the paper styled, 'PAPER UNDER 37 CFR 1.640(e) REQUESTING BOARD TO RECONSIDER DECISION ON MOTIONS,' filed on September 8, 1986 by Hsing (Paper No. 18). Myers et al. (Myers) did not file a response to this paper.
In his paper, Hsing urges that no interference-in-fact exists, i.e., that his claims corresponding to count 1 define a separate patentable invention over the Myers' claims corresponding to the count.
Hsing draws our attention to the fact that both he and Myers independently asserted that no interference-in-fact exists between the parties' claims corresponding to the count [FN1], which assertion, he contends, constitutes a stipulation by both parties that Hsing's claims corresponding to the count are directed to a separate patentable invention. Hsing urges that the EIC should have accepted the stipulation.
Hsing argues that he discovered an improvement over the invention of Myers, which invention, he (Hsing) has disclaimed [FN2]. Hsing characterizes Myers' invention as being directed to a conversion process using water in an appropriate level with any alumina catalyst having a purity of 99.5 weight percent. According to Hsing, Myers fortuitously employed examples using a low sodium alumina within the scope of Hsing's invention but Myers did not appreciate this critical and essential feature of the nature of the catalyst to be used in the process. In support of his contention, Hsing points to certain evidence, i.e. page 27 of his involved application (Exhibit A of his response), which, according to him, shows that his claims corresponding to the count are drawn to a separate patentable invention. The evidence is as follows:
TABLE V reports the results of example 31; TABLE VI, the results of example 32; and TABLE VII, the results of example 33. The catalyst used in examples 31 and 32 was A1-3428 which contains less than 0.01 weight percent sodium; the catalyst used in example 33 contains 0.02 weight percent sodium. Run A of TABLE V used no water; Runs B and C used, respectively, 0.1 ml water (0.08 mole of water/mole of alkene) and 0.2 ml water (0.17 mole of water/mole of alkene). The process conditions for the examples were reported in terms of LHSV (liquid hourly space velocity) of butene and temperature. In TABLE V, the LHSV and temperature were, respectively, 2.94 and 500C (932F); in TABLE VI, 4.2 and 515C (959F); and in TABLE VII, 1.35 and 500C (932F).
Hsing asserts that the foregoing evidence shows that the catalyst encompassed by his claims, a catalyst having less than 0.01 weight percent sodium, performed better than a catalyst having a sodium content of 0.02 weight percent, a catalyst outside of his claimed range. He points out that after two hours TABLE VI gave a 39% conversion (C) and 86% selectivity (S) as opposed to a 10% conversion and 89% selectivity for TABLE VII, a conversion for TABLE VI of four times greater than that of TABLE VII. At the end of two hours, this amounts to a yield (CXS) of 33.5% for TABLE VI as compared to a yield of 8.9% for TABLE VII. At about twenty hours, the situation was:
---- ---- -----
28% 88% 53%
---- ---- -----
5.3% 93% 5%
*2 Hsing argues that this amounts to a conversion using catalyst having a sodium content of less than 0.01 weight percent of over ten times greater than that of a catalyst having a sodium content of 0.02. weight percent.
We hold that the unrebutted evidence before us shows that an interference-in-fact does not exist.
Contrary to the allegations by Hsing, the parties' agreement that no interference-in-fact exists, in and of itself, does not constitute a stipulation which is binding on the PTO. See Jones v. Stuart, 192 USPQ 475 (Comm'r. 1975). Pursuant to 33 U.S.C. 135(a), the Commissioner, through his delegate, the Primary Examiner, determined that the Hsing application interfered with the Myers patent and instituted this interference. Therefore, it is presumed that since the parties are in interference, an interference-in-fact exists between the parties' claims corresponding to the count, and the burden of persuasion rests upon the party, here Hsing, urging the contrary. Case v. CPC International Inc., (cited in note 1). To rebut the presumption, sufficient evidence must be submitted to support the parties' conclusion that no interference-in-fact exists, and the evidence must be evaluated in accordance with the standard set forth in § 1.601(n) [FN3] to determine whether Hsing's claims corresponding to the count are directed to a separate patentable invention with respect to Myers' claims corresponding to the count.
Accordingly, Hsing must show that his claims define a new and non-obvious invention over that defined by Myers' claims, assuming Myers' claims are prior art with respect to Hsing's claims. Myers' claims do not limit the sodium content for the 'acidic alumina catalyst.' On the other hand, Hsing's claims limit the sodium content of the catalyst to less than 0.01 weight percent.
In this case, Hsing has presented evidence to show that an acidic alumina catalyst having a sodium content of less than 0.01 weight percent which is within his claimed range exhibits unexpected results, a conversion of ten times greater than that exhibited by a catalyst having a sodium content of 0.02 weight percent which is outside his claimed range. The results of this experiment appear to show unexpectedly good results within Hsing's claimed range and suggest that Hsing's invention is more than the mere optimization of a result effective variable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). There is no evidence in the record to the contrary, and Myers is silent on the matter. From Myers's failure to respond to the Hsing paper, we conclude that he does not question the persuasiveness of Hsing's evidence.
*3 Accordingly, we are constrained to agree with Hsing that his claims are directed to a separate patentable invention.
Preliminary statements have been opened and are required to be served by December 29, 1986. 37 CFR 1.621.
ACTION UNDER § 1.641
In view of our holding that an interference-in-fact does not exist, we consider that the Myers patent is now available as a reference against the Hsing claims, because Myers discloses but does not specifically claim the use of an alumina catalyst having a sodium co tent of 0.003 weight percent. Myers, column 1, lines 25 to 43, column 2, lines 16 to 18 and lines 26 to 28, and the examples teaches a process for the isomerization of n-butene to isobutene comprising adding water to the n-butene in an amount of at least 0.1 mole percent (preferably in the amount of from 0.3 to 100% of the n-butene) and contacting the wet n-butene with an alumina catalyst having a purity of at least about 99.5 weight percent. The Hsing claims read on the Myers' patent disclosure and are anticipated under 35 U.S.C. 102(e).
We are aware that during ex parte prosecution Hsing presented a declaration (Paper No. 4 of his involved application) under the provisions of 37 CFR 1.131 in an attempt to antedate the filing date of the Myers patent. This declaration is not properly before us. Cf. 37 CFR 1.671(e). Further, we note that the primary examiner did not evaluate the declaration, nor has the senior party had access thereto because preliminary statements have not yet been served. See 37 CFR 1.612(a).
SHOW CAUSE ORDER
Since the Hsing claims are considered unpatentable for the reasons stated above, Hsing is notified that judgment will be rendered against him unless he shall within 20 days after the date of this order file his views showing good cause why such action should not be taken.
Should Hsing elect to file his views, the following options are open to him:
1. He may rely upon the aforesaid declaration under 37 CFR 1.131 by serving a copy thereof upon the opposing party and file a brief explaining how the declaration antedates the reference.
2. In addition to (1), he may request a testimony period to submit evidence in addition to the declaration.
In accordance with 37 CFR 1.641 the senior party may file its views with respect to the § 1.641 action within 20 days after the date of service of the junior party's views.
Norman G. Torchin
Ronald H. Smith
FN1. We also note that Hsing argues that count 1 is improper. Contrary to his position, it is not, per se, improper to have a count in the disjunctive form, so long as the two alternatives define the same patentable invention. The count of an interference is merely the vehicle for contesting priority and need not be patentable under 35 U.S.C. 112 to either party. In re Kroekel, ---- F.2d ----, 231 USPQ 640 (Fed. Cir. 1986); Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), cert. denied, 105 S.Ct. 223, 224 USPQ 736, (1984); Squires v. Corbett, 560 F.2d 424, 194 USPQ 513 (CCPA 1977); Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA 1981) and Hedgewick v. Akers, 497 F.2d 905, 182 USPQ 167, note 6 (CCPA 1974). See §§ 1.601(f), 1.603 and 1.606. The test for interference-in-fact, as we note elsewhere, is whether the parties are claiming the same patentable invention.
FN2. The interference should not have been declared. If the Examiner determined that the Hsing claims were drawn to the same invention as the suggested claim, he should have rejected those Hsing claims which were previously stated as being unpatentable over the suggested claim on the basis that the failure to present constituted a concession that the subject matter of those claims is the prior invention of another in this country (Myers) under 35 U.S.C. 102(g) and thus prior art to Hsing under § 103. See the Manual of Patent Examining Procedure (MPEP), § 2305.01 (Fifth Edition, Revision 2, Dec. 1985).
FN3. § 1.601(n) provides that an 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'.