Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 QADRI ET AL.
BEYERS ET AL.
BATLOGG ET AL.
Patent Interference No. 101,981
November 9, 1990
Before R. Smith, Sofocleous and Downey
The Examiner-in-Chief (EIC) in his decision on the preliminary motions (Paper No. 131) granted the Beyers et al (Beyers) motion under 37 CFR 1.633(a) for judgment against Chu on the ground that Chu's claim 94, the only Chu claim corresponding to the count, is unpatentable to Chu under 35 USC 112. Pursuant to 37 CFR 1.640(d)(1), Chu was ordered to show cause why judgment should not be entered against him in accordance with the EIC's decision.
Chu filed a response under 37 CFR 1.640(e) to the order to show cause wherein Chu attempted to show good cause why judgment should not be entered in accordance with the EIC's decision. In addition Chu filed a paper requesting "consent to entry of an amendment" whereby Chu presents an amendment to claim 94 in an effort to overcome the basis for judgment under 35 USC 112. Chu did not request that a final hearing be set to review the decision on the motion which was dispositive or on any other motion; nor did Chu file a motion requesting a testimony period. As set forth in the Commissioner's Notice of December 8, 1986, Interference Practice: Response to Order to Show Cause Under 37 CFR 1.640, 1074 O.G. 4, where the response does not request a final hearing but instead contains a full discussion of the reasons why judgment should not be entered:
(2) Such paper will be deemed a waiver of any opportunity to present oral argument concerning the matters discussed therein, and the matter will be decided by the Board based on the content of the paper and any response thereto.
Accordingly, the matter will be decided based on Chu's response to the order to show cause and on Beyers' response thereto.
In his response to the order to show cause Chu urges that the "good cause for refusing to issue such judgment is that Party Chu's application fully describes, and enables superconductive crystalline essentially single phase compositions which are the subject matter of the count." Chu notes that the basis of the decision that his claim 94 is unpatentable is that it is "overbroad" since it encompasses compositions which are inoperative as superconductors. Yet Chu urges that it is beyond question that claim 94 also encompasses compositions which are operative as superconductors. Chu urges that judgment with respect to the patentability of claim 94 be deferred to final hearing in order to consider Chu's case for priority, and that if Chu prevails on priority then Chu can amend claim 94 to overcome the basis for unpatentability in subsequent ex parte prosecution. Alternatively, Chu contends that if the show cause order is not vacated, good cause exists for consent to entry of his amendment to claim 94.
*2 We have carefully considered Chu's response to the show cause order, and we find that Chu has not set forth good cause why judgment should not be entered against Chu. We agree with the EIC and with Beyers that judgment should be entered against Chu.
It is apparent that Chu points to no error in the decision of the EIC that claim 94, Chu's only claim corresponding to the count, is unpatentable to Chu. Rather, Chu offers to amend claim 94 or to defer consideration of the patentability of claim 94 until final hearing or until subsequent ex parte prosecution. It is our view, however, that patentability of at least one claim corresponding to the count is a threshold question which is determinative of whether an interference exists. Cf. Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976) and Kwon v. Perkins, 6 USPQ2d 1747, 1750 (BPA & I 1988). In the absence of a patentable claim corresponding to the count Chu has not shown good cause why judgment should not be rendered against him.
When a motion is filed under 37 CFR 1.633(a) for judgment against a party, the rules provide in 37 CFR 1.633(i) that the party may file in addition to an opposition to the motion for judgment a motion to redefine the interfering subject matter pursuant to 37 CFR 1.633(c), e.g., a motion to amend an application claim corresponding to the count. Thus, any motion to amend claim 94 in response to the motion for judgment was required to be filed at the same time the opposition to the motion was filed. Chu's motion for consent to amend claim 94 filed with the response to the order to show cause is plainly belated, and Chu has presented no showing of sufficient cause why the paper was not timely filed as required by 37 CFR 1.645(b). Accordingly, the motion is not entitled to be considered and is dismissed in accordance with 37 CFR 1.645(b). See Landauer v. Knol v. Lindenblad, 108 USPQ 296 (Comm'r 1955) where the Commissioner upheld the dismissal of Lindenblad's belated motion to amend and refused to excuse the failure to act during the motion period. The Commissioner noted that interference practice "does not contemplate any such piecemeal prosecution."
We note that Chu has argued in his response that if judgment is issued against him a second interference would be required because Chu could upon return to ex parte prosecution "as a matter of right amend claim 94 to eliminate the basis on which it was preliminarily held to be unpatentably overbroad." We disagree with Chu's argument. In our view Chu has completely overlooked the provisions of 37 CFR 1.658(c) which provide that a losing party is estopped to take any ex parte action which is inconsistent with that party's failure to properly move during the interference.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ronald H. Smith
Mary F. Downey