BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 JACOBS III ET AL. v. MORIARITY ET AL. v. TOMINAGA Patent Interference No. 101,573

Board of Patent Appeals and Interferences

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







Patent Interference No. 101,573

January 14, 1988


Before Urynowicz, Torchin and R. Smith













 On December 16, 1987 (Paper No. 47), Moriarity et al. (Moriarity), pursuant to 37 CFR 1.640(c) (§ 1.640(c)), filed a request for reconsideration of dismissal by the Examiner-in-Chief (EIC), in his Decision on Motions of November 30, 1987 (Paper No. 42), of certain motions brought by Moriarity.





 On September 23, 1986 (Paper No. 16), Moriarity had filed, pursuant to § 1.633(a), a preliminary motion for judgment. Among other grounds, it was urged that all of the claims of both Jacobs et al. and Tominaga corresponding to the count are unpatentable to them under 35 USC 102 or 103. Various patents (10 in all) were referred to in the paper with respect to these grounds. Copies of none were submitted with the motion paper.



 The EIC treated the two motions [FN1] together and dismissed them on two grounds. First, for failure to comply with § 1.639(a) [FN2] in failing to include copies of the patents with the motion paper. Second, for failure to comply with § 1.637(a)(2) and (3) [FN3] in failing to adequately address the issues.



 Moriarity requests reconsideration of the dismissals on both grounds. We have reviewed the EIC's decision in light of the comments submitted by Moriarity and do not find that the EIC misapprehended the rules in question.





 Turning first to the issue of compliance with § 1.639(a) (see n. 3), it is clear that evidence within the meaning of § 1.639(b), in this case copies of patents, must be provided with the motion. An exception is provided for by the rule where the evidence is 'part of' the file of an involved application or patent, or of a parent application thereof for which benefit has been obtained or is sought. The clear purpose of the Rule is to have the evidence readily available to the EIC. If evidence in accordance with § 1.639(b) is not submitted with the motion, the burden falls to movant to come forward and explain in his motion paper why it comes under the exception and where in the files it can be found. Moriarity made no such attempt in his motion paper. As a matter of fact, even in his request for reconsideration no such attempt has been made or even addressed.



 We do not consider Moriarity's action to be within the spirit and the scope of the rule because it places an undue burden on the EIC to search through all the involved files--i.e., each and every paper in the interference file, each and every paper in the involved application, and each and every paper in any parent application whose benefit has been accorded or is sought to--and then make a sua sponte determination of whether any evidence to which reference is made in a motion paper is 'part of' such files within the meaning of the rule. Where any doubt exists, it behooves a moving party, out of an abundance of caution, to submit his evidence with his motion paper.



  *2 For the sake of completeness, we have perused the various files with respect to the patents in question and note that certain of them are not 'part of' those files. For example, among the references referred to in the motion paper, U.S. Patents Nos. 3,922,253, and 4,017,438 were cited in the Jacobs et al. patent file. That which is 'part of' the file is listed in the 'Contents' of the file (on the outside flap). Copies of the references cited only by the examiner are not so listed and are not 'part of the file.' [FN4] Indeed, copies of such references are kept with the file only for the convenience of the examiner and the Publishing Division. See MPEP 1302.12. Once the application matures into a patent the copies are removed, as a perusal of patent files in general--and those of Jacobs et al. and Tominaga in particular--will show. Moriarity does not allege that copies of the noted patents are present in the Jacobs et al. patent file. Indeed, they are not. We further note that U.S. Patent No. 3,947,338, also referred to in the motion paper does not appear to have been cited anywhere in the files.



 We hold therefore that the EIC correctly applied § 1.639(b).





 Turning now to the issue of compliance with § 1.637, we find no fault with the EIC's position which was as follows (footnote omitted):

   The motions are further dismissed for failure to comply with § 1.637(a)(2) and (3). The references are given but a 'broadbrush' treatment without setting forth which particular portion or portions of the references are relied upon. Nor is there any clear and concise statement as to how any of the references anticipate the claims within the meaning of 35 USC 102 or which subsection of the statute is to be purportedly applicable. If the compositions of the claims are inherently produced by the methods set forth in the reference, there is no objective evidence to that effect. Nor has the requisite unrebutted prima facie, case for unobviousness been set forth, e.g., where is the 'motivation' for the changes allegedly suggested. See, Inter alia, In re Lalu, 747 F.2d 703, 223 USPQ 1257, 1258 (Fed.Cir. 1984).



 As the proponent of the proposition that the claims of Jacobs et al. and Tominaga corresponding to the count are unpatentable to them, the burden falls on Moriarity to clearly establish such. Certainly, this burden is no lesser on the part of movant than it is on an Examiner rejecting claims or on a Requestor for reexamination. See, e.g., MPEP 706 which provides, inter alia,

   Office policy has consistently been to follow Graham v. John Deere Co.   [383 U.S. 1, 148 USPQ 459 (1966)] in the consideration and determination of obviousness under 35 U.S.C. 103. As quoted above, the three factual inquiries enunciated therein as a background for determining obviousness are briefly as follows:

  *3 1. Determination of the scope and contents of the prior art.

 2. Ascertaining the differences between the prior art and the claims in issue; and

 3. Resolving the level of ordinary skill in the pertinent art.

See also MPEP 2214, and in particular the sample request at pages 2200-15 and 2200-16 wherein the requestor specifically analyzed the claims in terms of the reference, with specific attention being directed to the most pertinent portions of the references. In his motion paper, Moriarity merely set forth conclusions rather than an appropriate analysis of the references vis-a-vis the claimed subject matter.



 Certainly, if Moriarity considered any one of the 10 references cited to be an anticipation within the meaning of 35 USC 102, he should have pointed to at least one compound disclosed by those references--by page and line--upon which the claims read. This he did not do in his motion paper or even in his request for reconsideration.



 If he considered the subject matter to have been obvious, he should have analyzed the references in accordance with the MPEP. He should have explained where in the reference--by page and line--relevant subject matter is disclosed, what the differences between that and the claimed subject matter are, and why the invention as whole would have been obvious. In other words, as explained by the EIC, Moriarity did not make out a prima facie case for obviousness as he is required to do. In addition to In re Lalu, cited by the EIC, see among many others, In re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed.Cir. 1986); and In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed.Cir. 1984); and In re Rinehart, 531 F.2d 1098, 189 USPQ 143 (CCPA 1976). Indeed, as an analysis of the decisional law will show, a prima facie case is the sine qua non of an obviousness rejection.



 It appears that Moriarity would place the burden on the EIC, or on the Board at Final Hearing, for making out a case for unpatentability, as he urges in his request for reconsideration (p.5):

   Moriarity respectfully submits under the new rules of interference which gives the EIC jurisdiction over matters of priority as well as patentability, the EIC sua sponte should consider patents bearing on patentability which are brought to his attention (see Section 1.641, 1.665(a), 1.658, and 1.659(b)).

   Alternately, under Section 1.655(a) or (c) since the EIC's decision relates to patentability of the invention (1.655(a)(3)) and/or admissibility of evidence (1.655(a)(4)), the issue raised by the decision should be considered at final hearing.



 However, § 1.641 is clearly discretionary with the EIC. He obviously elected not to exercise that discretion; nor do we here. Reference to that section cannot be used to thwart the purpose of the rules which place the burden of establishing unpatentability in a preliminary motion on movant. See Theeuwes v. Bogentoft, 2 USPQ2d 1378 (Comm'r. 1987). Parties are not entitled to be heard on the marits of the exercise of such discretion. Cf. MPEP 1105.05, which directs attention to Hageman v. Young, 1898 CD 18 (Comm'r.).



  *4 The EIC, citing § 1.655 and Land v. Dreyer, 155 F.2d 383, 69 USPQ 602 (CCPA 1946), correctly noted (note 2 of his decision) that 'issues raised in dismissed motions are not entitled to review at final hearing.' Sections 1.655(c) and 1.659(b) are also discretionary, the exercise of such discretion being left to the Board at Final Hearing. Cf. D.O.E. v. Daugherty, 187 F.2d 432, 215 USPQ 4, 11 (CCPA 1982) ('[T]he matter is committed to the sound discretion of the board . . .').



 We hold therefore that the EIC properly applied the standards of § 1.637(a)(2) and (3).





 For the foregoing reasons, the Moriarity request for reconsideration is denied to the extent it asks any modification of the EIC's Decision on Motions.



 All times remain as set.






Stanley M. Urynowicz, Jr






Norman G. Torchin






Ranald H. Smith






FN1. 637 Content of motions.

   (a) Every motion shall include (1) a statement of the precise relief requested, (2) a statement of the material facts in support of the motion, and (3) a full statement of the reasons why the relief should be granted.

   1. In the Decision on Motions, this charge of unpatentability as to Jacobs et al. was designated as 'Motion C.2.(iii)' and as to Tominaga as 'Motion C.2.(iv).' The decision complained of is under the heading 'Motions C.2.(iii) and(v)' at page 3 of the decision.



FN2. § 1.639 provides, in part,

   1. 639 Evidence in support of motion, opposition or reply.

   (a) Proof of any material fact alleged in a motion, opposition, or reply must be filed and served with the motion opposition, or reply unless the proof relied upon is part of the interference file or the file of any patent or application involved in the interference or any earlier application filed in the United States of which a party has been accorded or seeks to be accorded benefit.

   (b) Proof may be in the form of patents, printed publications, and affidavits. * * *



FN4. We do not here rule on whether references cited in accordance with the Information disclosure statement of § 1.97 constitute 'part of' the files.


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