BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 ASARI v. ZILGES ET AL. Patent Interference No. 101,220

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,220

December 2, 1987


Before Calvert



Vice Chairman



Boler and Cohen









Vice Chairman





 The parties have filed the following papers:

   1. Request for Reconsideration and Rehearing Under 37 CFR 1.256(b), filed by Zilges et al on October 19, 1987 (Paper No. 154);

   2. Opposition to (1), filed by Asari on November 2, 1987 (Paper No. 155);

   3. Reply to (2), filed by Zilges et al on November 16, 1987 (Paper No. 156);

   4. Motion Requesting That the Board Return the Party Zilges et al.'s Reply Unread, filed by Asari on November 19, 1987 (Paper No. 157).



 Since 37 CFR 1.256(b) does not provide for a reply to a reply to a request for rehearing or reconsideration, the Zilges et al reply, item (3) above, will be given no consideration, per the Commissioner's Notice of November 9, 1976, 953 O.G. 2. The Asari motion, item (4), is denied insofar as it seeks removal of the Zilges et al reply from the file.



 Although Paper No. 154 is styled as a "Request for Reconsideration and Rehearing," Zilges et al do not appear to seek another hearing in this case. To the extent that such a further hearing may be sought, the request is denied. See 37 CFR 1.256(a), last sentence.



 Zilges et al contend that our decision of September 18, 1987 (Paper No. 153) was in error in holding that Zilges et al had failed to establish conception of the subject matter of count 3 prior to April 19, 1980. In particular, they assert that ZX-6 shows the steps of the count, and that the first two figures of this exhibit show the prior art extant at the time of the alleged conception.



 We disagree. Count 3 recites that "a billet is normally extruded from the container through the die by forcing the die stem and the pressurizing stem towards one another," and then recites as step (a) "providing an axial opening in the face of the pressurizing stem ..." ZX-6 does not show any opening provided in the pressurizing stem, but rather the removal of a "sticker" by substitution of a special hollow stem for the normally-used pressurizing stem, as shown in the last three figures. The special stem cannot be considered the pressurizing stem of step (a) because it is not used to normally extrude the billet through the die as recited in the preamble of the count. We find nothing in ZX-3 which would indicate that the pressurizing stem has an axial opening.



 Zilges et al note that at ZR-83 to 85 Huertgen testified that ZX-6 showed all the limitations of count 3. However, such testimony amounts to a series of legal conclusions, which we are not bound to accept. See Dunlap v. Doll, 127 USPQ 509, 512 (Bd.Pat.Int.1960).



 A further argument is that the issues concerning conception of count 3 are new issues, never raised by the junior party, and that "[i]f they had been raised by the junior party during the testimony period, Zilges et al would have had the opportunity to rebut any pertinent facts alleged by the junior party regarding such issues" (request page 11). We find no merit in this argument. In the first place, even if a case is unopposed, this Board must still determine that a prima facie case has been established, Cf. Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA 1981). Secondly, Asari stated in footnote 2 of his brief that he did not concede actual conception of either count by either Zilges et al inventor. Thirdly, it is not apparent how Asari would (or should) have raised this argument during the testimony period; since the question of conception of count 3 would not be raised until after the completion of testimony, it is not apparent how the testimony taken by Zilges et al could be affected by whether the issue was subsequently raised in Asari's brief, or by the Board.



  *2 Zilges et al had the opportunity, during their testimony period, to put in whatever evidence they desired concerning prior conception, and their testimony period will not now be reopened after the final decision to allow them to submit additional evidence on the same subject. Cf. Burson v. Carmichael, 731 F.2d 849, 221 USPQ 664 (Fed.Cir.1984).



 Finally, Zilges et al seek reversal of our holding that the grant of the Asari motion for additional discovery was correct. We have reviewed this holding (stated on pages 6 and 7 of Paper No. 153) in light of the Zilges et al contentions, but are not persuaded that it was erroneous.



 Accordingly, the Zilges et al request is denied to the extent that it seeks any reversal or modification of Paper No. 153. This does not constitute a new decision within the meaning of 37 CFR 1.256(b).






Ian A. Calvert



Vice Chairman



James R. Boler






Irwin C. Cohen





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