Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 MILLER ET AL.
CHESTER ET AL.
Patent Interference No. 101,717
August 8, 1989
Dual Component Crystalline Silicate Cracking Catalyst
Patent granted to Stephen J. Miller and Keith C. Bishop on July 20, 1982, Patent No. 4,340,465 filed September 29, 1980, Serial No. 191,575.
Application of Arthur W. Chester, Albert B. Schwartz and William A. Stover filed July 15, 1983, Serial No. 514,122. Accorded benefit of Serial Nos. 430,198 filed September 30, 1982; 301,851 filed September 14, 1981, now U.S. Patent 4,368,114; 331,428 filed December 16, 1981, now U.S. Patent 4,521,298; 050,588 filed June 21, 1979; 100,585 filed December 5, 1979, now U.S. Patent No. 4,309,279 and 170,220 filed July 18, 1980, now U.S. Patent No. 4,309,280.
J.A. Buchanan, Jr., D.A. Newell, W.H. Hooper and S.H. Roth for Miller et al.
Alexander J. McKillop, Michael G. Gilman, James F. Powers, Jr., Dennis P. Santini and Marina V. Schneller for Chester et al.
Before Torchin, R. Smith and Sofocleous
This interference involves a patent of Miller et al (Miller), Patent No. 4,340,465, which issued July 20, 1982 and is assigned to Chevron Research Company, and an application of Chester et al (Chester), application Serial No. 514,122, filed July 15, 1983 and assigned to Mobil Oil Corporation.
The subject matter of the interference relates to a process for catalytically cracking a hydrocarbon feedstock. The sole count at issue corresponds exactly to claim 1 of the Miller patent and reads as follows:
A process for catalytically cracking a hydrocarbonaceous feedstock comprising the step of contacting the feedstock in a reaction zone under catalytic cracking conditions in the absence of added hydrogen with a catalyst composition comprising a crystalline silicate component having a mole ratio of oxides of Si0@2:Al@2O@3 greater than about 500 and having an internal pore structure which will allow the entry of normal aliphatic and slightly branched aliphatic compounds, yet substantially exclude all compounds having a molecular dimension equal to or substantially greater than a quaternary carbon atom and a large pore size crystalline aluminosilicate cracking component.
The claims of the parties which correspond to the count are:
Miller: Claims 1-20
Chester: Claims 1-30
The Examiner-in-Chief (EIC) in his decision on motions (Paper No. 53) granted Miller's motion (designated (A)(1)) to the extent that Chester's claims 1-16, 29 and 30 were found unpatentable over the Rosinski et al patent (4,309,280) under 35 USC 102(b). Acting pursuant to 37 CFR 1.641, the EIC found Chester's claims 17-28 unpatentable under 35 USC 102 or 103 over U.S. Patent No. 3,758,403. Further, the EIC granted Miller's motion (designated as (A)(2)) for judgment on the ground that the party Chester is estopped to contend that the claims corresponding to the count are patentable to Chester based on the disclaimers of the subject matter of the count in Chester's parent applications. Pursuant to 37 CFR 1.640(d)(1), Chester was ordered to show cause why the judgments should not be entered against him.
*2 In response to the show cause order, Chester did not request that a final hearing be set; nor did Chester file a motion requesting a testimony period. Rather, Chester's response (Paper No. 54) requested reconsideration of the EIC's determinations and submitted that judgment should not be rendered against him for the good causes designated as I-IV. As set forth in Commissioner's Notice of December 23, 1981, 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 upon the content of the paper and any response thereto.
Accordingly, the matter will be decided based on Chester's paper responding to the order to show cause and on the Miller response thereto. The additional papers filed by Chester, i.e., Paper Nos. 57, 58 and 60, are not provided for by the rules of practice, not responsive to the order to show cause and are entitled to no consideration. Cf. Kramer v. Ballard, 11 USPQ2d 1148 (Comm'r 1989). The reply by Chester to Miller's response (Paper No. 58) is not authorized by 37 CFR 1.640(e). Chester's Paper No. 57, to the extent that it requests that the 37 CFR 1.633 motion period be reopened, fails to comply with the requirements of 37 CFR 1.635, 1.637(b) and 1.645(b). Accordingly, the noted additional papers will be returned to Chester as unauthorized papers. 37 CFR 1.618; Kramer v. Ballard, supra.
Chester's four good causes numbered I-IV will be considered in the order presented by Chester. In his first response designated as I Chester urges that judgment should be entered against Miller. Chester seeks reconsideration of the denial of Chester's motion for judgment against Miller on the ground that Miller's claims are unpatentable due to an alleged admission by Miller.
Chester's "good cause I" is not responsive to the order to show cause why judgment should not be rendered against Chester. The order to show cause was based on the decisions of the EIC which held that Chester's claims corresponding to the count were unpatentable to Chester. Chester's "good cause I" does not address the basis of the order to show cause and therefore presents no reason why judgment should not be entered in accordance with the order.
Chester's request for reconsideration of the decision denying Chester's motion for judgment against Miller is plainly not a response to the order to show cause pursuant to 37 CFR 1.640(e), but rather is a request for reconsideration of a decision on a motion "which does not result in the issuance of an order to show cause." 37 CFR 1.640(c). The denial of Chester's motion for judgment did not result in the issuance of an order to show cause. Requests for reconsideration of motions which do not result in the issuance of an order to show cause are governed by 37 CFR 1.640(c), which also provides that such requests for reconsideration may be filed "within 14 days after the date of the decision" and shall specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision. The request for reconsideration of the denial of Chester's motion is untimely because it was not filed within the 14 day period specified by 37 CFR 1.640(c). Since Chester filed no motion pursuant to 37 CFR 1.645(b) and 1.635 to show sufficient cause why the request for reconsideration was not timely filed, it will not be considered. 37 CFR 1.645(b). The Board has no authority to waive express requirements of the rules.
*3 In good cause II Chester urges that Miller's motion for judgment on the ground of estoppel should be resolved in favor of Chester. Miller's motion for judgment on the ground of estoppel was granted by the EIC because a disclaimer of the subject matter of the count was found in both lines of Chester's parent applications due to a refusal to comply with the examiner's requirements to present a claim corresponding to Miller patent claim 1. We have carefully considered Chester's position as set forth in "good cause II" and the response thereto by Miller, and we have decided that we agree with the decision of the EIC that Chester's claims are unpatentable on the ground of estoppel for the reasons set forth by Miller in his response and the following additional comments.
Chester urges that, even though the examiner held that there was a disclaimer in both lines of Chester's parent applications, there was a "retreat by the PTO of its 'disclaimer' positions" due to the issuance of patents in the earlier applications. It is Chester's position that since the patents were allowed, Chester had no standing to appeal or petition the holdings of disclaimer. We disagree with Chester's arguments. There was no retreat from the clear and unequivocal holdings of disclaimer by the examiner. The allowance of claims was based on the additional limitations in the claims which rendered those claims patentably distinct from the subject matter disclaimed. The examiner's holding that the claims allowed in application Serial No. 430,198 were patentably distinct from the subject matter disclaimed was upheld on petition (Paper No. 19). Accordingly, there was no "retreat" from the holding of disclaimer in our view. Moreover, we disagree with Chester's present contention that he could not have petitioned the examiner's holding of disclaimer, and sought review of any adverse decision on petition, if he disagreed with the holding of disclaimer. Rather, as noted by Miller, there is no indication in the records of the parent cases that Chester "even disagreed with the disclaimer holdings, much less would have wanted review of them."
Chester also argues that even if there were an estoppel against the inventors in the parent applications, "that estoppel is irrelevant to Chester patent application claims at issue herein." Thus, it is Chester's position that any disclaimer is "personal" to the inventor(s) of the application wherein the disclaimer took place. Since the involved application has a different inventive entity than the two lines of parent applications, i.e., the involved application names Chester, Schwartz and Stover as inventors, whereas one of the parent chains includes Rosinski and the other includes Comier, neither of which are included as inventors in the involved application, Chester urges that any disclaimers in the parent applications are not binding on the inventive entity of the involved application. Accordingly, Chester urges that the holding by the EIC that "Chester" disclaimed the invention of the Miller patent by refusing to comply with the examiner's requirements to present a claim corresponding to Miller patent claim 1 is erroneous because the disclaimers were made by a different inventive entity.
*4 We disagree with Chester's contentions to the effect that any disclaimer is personal to the inventors and may therefore be overcome by filing a continuing application in which one of the inventors is omitted. We construe the decision of the EIC that "Chester" disclaimed the invention of the Miller patent to indicate that the "party" Chester disclaimed the invention, not Chester individually as urged by Chester. As defined in 37 CFR 1.601(1), a "party" is:
(1) An applicant or patentee involved in the interference or (2) a legal representative or an assignee of an applicant or patentee involved in an interference.
As noted by Miller, the involved application as well as the applications in which the disclaimers took place, were assigned to the Mobil Oil Corporation, the real party in interest. The action in disclaiming the invention of the Miller patent was taken by attorneys employed by the Mobil Oil Corporation without any contention that the Miller invention was not being copied because the inventorship was wrong. Indeed, Mobil could have petitioned to correct the inventorship of the applications pursuant to 37 CFR 1.48 or moved during the interference to correct the inventorship pursuant to 37 CFR 1.634 if a problem therein was perceived.
We also disagree with Chester's contention that there is no case precedent or policy which would support a conclusion that Chester's assignee made the disclaimer on behalf of Chester, Schwartz and Stover. In our view the issue presented here is analogous to that in Fraze v. Siemonsen, 186 USPQ 480 (Bd.Pat.Int.1974) where the Board held that the estoppel for failure to move applies against the assignee of a party as well as against the party himself, inasmuch as Rule 231(a)(3) refers to any other application "owned by him." "Old Rule" 231(a)(3) authorized motions to substitute any other application owned by a party and was in effect at the time of the disclaimers. Thus, there is precedent for finding that a disclaimer in an interference situation applies against the assignee as well as the inventors. Further, our decision is in accord with the public interest in avoiding piecemeal prosecution of interferences in order to prevent unnecessary postponement of the determination of patent rights between competing inventors. Cf. Pritchard v. Loughlin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966).
As noted by Miller, Chester effectively wants it both ways: the benefit of the filing dates of the earlier cases of varying inventorship, but not the disabilities (disclaimers) of those earlier cases. We agree with Miller's position that the Chester contentions would make a mockery of the disclaimer practice which has been in place in the office for a very long time and which is essential to orderly procedure in dealing with potentially interfering cases. Chester made no mention of any inventorship problem when the party Chester disclaimed the Miller invention in both lines of parent applications, and it is therefore our view that the party Chester is estopped from doing so now.
*5 In Chester's response designated as good cause III, Chester requests reconsideration of the decision of the EIC that Chester claims 17-28 are unpatentable over US Patent No. 3,758,403 (403) under 35 USC 102 or 103. Chester contends that neither Miller nor the EIC has established that (403) provides "written description" and "enablement" of the subject matter of the rejected claims. In particular, Chester quotes a limitation of claim 17 "a silica to alumina mole ratio of at least 12 and wherein ... sufficient to effect octane number increase and total yield improvement" and urges that neither Miller nor the EIC has established that the reference provides written description and enablement for the quoted subject matter.
We have carefully considered Chester's position as set forth in "good cause III" and Miller's response, and we have decided that we agree with the decision of the EIC that Chester's claims 17-28 are unpatentable over (403) for the reasons set forth by the EIC in his decision and by Miller in his response. As noted by Miller, Chester "never actually contends that the claims are patentable over the '403 patent." Rather, Chester merely criticizes the adequacy of the EIC's statement of reasons for the rejection. We agree with Miller that it is just not possible to seriously contend that (403) does not disclose a shape selective zeolite having a silica to alumina ratio higher that 12, and the EIC in his decision quoted from (403) the disclosure that ZSM-5, the preferred zeolite, "has a silica/alumina mole ratio that ranges up to about 60." If it is Chester's contention that the reference must provide written description for the full scope of claim 17, i.e., at least 12, we agree with Miller's position that a reference need not disclose the full scope of a claim in order to invalidate it. In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958). The request for reconsideration of the rejection of Chester claims 17-28 over (403) fails to demonstrate any error in the EIC's decision and accordingly fails to show good cause why judgment should not be entered against Chester.
In Chester's response designated as good cause IV, Chester requests reversal and withdrawal of the EIC's decision holding claims 1-16, 29 and 30 unpatentable under 35 USC 102(b) over U.S. Patent 4,309,280 (280). Chester's argument, however, is directed solely to claims 29 and 30. Chester points out that claims 29 and 30 include the limitations of claim 17 by virtue of their dependency therefrom. Apparently, Chester's position is that the rejection does not adequately address the limitations of claim 17.
We have carefully considered Chester's position as set forth in "good cause IV" and Miller's response, and we agree with Miller that Chester has not shown good cause why the judgment should not be entered in accordance with the EIC's decision. Chester was under a order to show cause why judgment should not be entered against him, but Chester advanced no reason why claims 29 and 30 are patentable over (280). For reasons adequately expressed in Miller's response, we agree with Miller that neither Miller nor the EIC is obliged to present "make-work explanations of things about which there is no room for genuine dispute." Since Miller's motion was granted by the EIC, Chester has the burden to demonstrate error in that decision, and Chester has plainly failed to meet that burden.
*6 For the foregoing reasons, judgment is hereby awarded against Chester as to the subject matter of count 1. Chester is not entitled to a patent containing claims 1-30, corresponding to Count 1. Miller is entitled to his patent containing claims 1-20, corresponding to count 1.
BOARD OF PATENT APPEALS AND INTERFERENCES
Norman G. Torchin
Ronald H. Smith