Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
WINKLER ET AL.
Patent Interference No. 101,685
March 15, 1989
Final Hearing February 9, 1989
Copyprotecting System For Software Protection
Patent granted to Paul Guglielmino on April 22, 1986, Patent No. 4,584,641, Serial No. 533,132 filed August 29, 1983.
Application of James L. Winkler and John G. Juracich filed November 22, 1982, Serial No. 443,766.
Eugene F. Malin, P. Gregory Jones, Pamela A. Simonton and Edward F. Miles for Guglielmino. Oral argument by John C. Smith, Jr. and James H. Laughlin, Jr.
Warren P. Kujawa for Winkler et al.
Before Urynowicz, Boler and Hairston
This interference relates to copyprotected disks. The particular subject matter in issue is illustrated by count 1, the sole count, as follows:
A target disk that is not copyable, comprising:
at least one imput/output error means untransferable for copying purposes by machine readable computers;
a physical magnetic readable signal;
said physical magnetic readable signal inducing a signal means for allowing bypassing said input/output error means to allow continuous use of said target disk but to prevent use of a copied disk.
The claims of the parties which correspond to this count are:
Guglielmino 2: Claims 1 to 20
Winkler et al. (Winkler): Claim 15
On July 3, 1986 Winkler added claim 15 to his application for the purpose of provoking an interference. This proceeding was declared on December 11, 1986, with claim correspondence to count 1 as shown above; claim 1 of Guglielmino corresponds exactly to the count.
On March 23, 1987 Winkler filed a motion under 37 CFR 1.633(a) for judgment on the ground that the junior party Guglielmino's patent claims 1 to 20 and therefore, the issue of this interference, are unpatentable to Guglielmino over U.S. Patent 4,462,078 to Ross under 35 USC 103 (Paper No. 16). On May 4, 1987 the junior party filed a motion to dissolve the interference on the ground that, by filing his aforementioned motion, the senior party had admitted that his sole claim 15 corresponding to the count is unpatentable under 35 USC 103 over the Ross patent (Paper No. 31). Both motions were opposed (Paper Nos. 34 and 40, respectively). In his opposition to the Guglielmino motion, Winkler alleged that the patent to Ross is a statutory bar under 35 USC 102(b) against Guglielmino but not against himself [FN1] and that he made no admission in his motion of March 23, 1987 that the Ross patent renders the subject matter of the count unpatentable to himself. In the Decision on Motions of February 23, 1988, the aforementioned motion of Guglielmino was treated as a motion for judgment on the ground alleged by him and the motion was granted. The Examiner-in-Chief's decision on the motion reads as follows:
*2 The Guglielmino motion filed May 4, 1987 to dissolve the interference on the ground that the senior party has admitted his sole claim 15 corresponding to the count is not patentable under 35 USC 103 over U.S. Patent No. 4,462,078 is treated as a motion for judgment on that same ground since the Rules of Practice do not provide for dissolution of an interference. The motion for judgment is granted. The party Winkler et al, in a motion under 37 CFR 1.633(a) for judgment filed March 23, 1987, has cited the aforementioned patent which the senior party effectively states, makes obvious the issue of the interference. There appears to be no reason why the senior party's representation that the issue of the interference is unpatentable to him should not be accepted at face value as an admission that he is legally barred from obtaining a patent on that subject matter. Ex parte Grall, 202 USPQ 701 (1978). If an applicant does not regard claims patentable to him, there is no good reason why the Patent and Trademark Office should be put to the burden of considering the question of patentability. Silvinski v. Lane, 1922 CD 4 (Comm'r 1922).
In that same decision the Examiner-in-Chief denied a motion of Winkler to substitute a count (Paper No. 15) and dismissed as moot all other motions of the parties. The decision ordered Winkler to show cause why, in view of the finding that he had made an admission which barred him from obtaining a patent on the subject matter involved herein, judgment should not be entered against him. A response requesting final hearing to review the decision of the Examiner-in-Chief was timely filed by the senior party (Paper No. 56). Winkler took no other action other than to request a testimony period '. . . in order to adduce the evidence required to prevail on the order to show cause.' On May 20, 1988 the request for final hearing was granted only for the purpose of reviewing the Examiner-in-Chief's decision on the junior party's motion for judgment on the basis that Winkler's sole claim 15 corresponding to the count is unpatentable to him based on admission; the motion for a testimony period was dismissed.
Neither party took testimony. Both parties filed briefs; only the party Guglielmino appeared for oral hearing.
Patent and Trademark Office records indicate the Guglielmino patent is unassigned whereas the Winkler application is assigned to Dysan Corporation.
In his brief Winkler's position is that he was nowhere in this proceeding admitted the unpatentability of claim 15 over the Ross patent. The senior party asserts that the cases of Ex parte Grall, supra. and Slivinski v. Lane, supra., cited by the Examiner-in-Chief in his decision of February 23, 1988, are clearly not controlling on the facts herein presented. In the prior case, the applicant Grall moved to dissolve an interference on the ground that the counts were unpatentable to both parties and in the latter case, the applicant Slivinski admitted a prior patent anticipated the issue of the interference in which his application was involved; Winkler states he never moved to dissolve on the basis that the count is unpatentable to both parties (Grall) or that the count is unpatentable to himself (Slivinski).
*3 We are of the opinion that Winkler has admitted unpatentability of the subject matter of the interference and thus, the unpatentability of his sole claim 15 corresponding thereto, and that on this basis the junior party patentee is entitled to prevail herein. The senior party can take no comfort from the fact that in the Grall and Skivinski cases, each applicant admitted in specific terms that the subject matter of the interferences was unpatentable to himself whereas here, he used no such terms. At MPEP 2308.02 (5th Ed., Rev.9, Sept. 1988), which concerns the prima facie showing which an applicant must make before an interference is declared with a patentee whose effective U.S. filing date antedates the applicant's by more than three months, it states in partinent part,
If the showing is based on alleged unpatentability of the patent claim or claims, the examiner should determine whether any ground of unpatentability alleged is such that it would also apply to the applicant; for example, if the applicant alleges that the claims of the patent are statutorily barred by a reference which would also be a bar to the applicant. If the examiner finds that an alleged ground of unpatentability would also apply to the applicant, the interference should not be declared and the applicant's claims which are drawn to the same invention as the claims of the patent should be rejected on this admission of unpatentability, without regard to the merits of the matter. Compare Ex parte Grall 202 USPQ 701 (Bd.App.1978).
We see no reason why this rational should not apply at any stage of an interference to an applicant raising the question of patentability of patent claims against an opponent. Hence, Winkler's admission lies not in any specific terms of admission used by him in his motion but in the very nature of his motion, which in effect alleged unpatentability of the subject matter of the count to the patentee. By specifically charging that Guglielmino's claim 1, which corresponds exactly to the count, is unpatentable over the Ross patent, it is inescapable that Winkler charged that the subject matter of the count and his own claim 15 corresponding thereto, are unpatentable.
Winkler's failure to avoid an admission arises from the fact that in his motion charging unpatentability to the patentee he made no attempt to show that the basis for unpatentability did not apply against himself.
In view of our finding above, the junior party patentee Guglielmino is entitled to prevail.
Judgment as to the subject matter of count 1 in issue is awarded to Paul Guglielmino, the junior party. Winkler et al. are not entitled to a patent containing claim 15 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Stanley M. Urynowicz, Jr
James R. Boler
Kenneth W. Hairston
FN1. Based on the August 29, 1983 filing date of Guglielmino and the July 24, 1984 issue date of Ross, it is clear that the reference is not a bar as characterized by Winkler.
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