Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
KELLENBERGER ET AL., [FN1] JUNIOR PARTY
v.
DUENK ET AL., [FN2] SENIOR PARTY
Interference No. 102,172
March 14, 1991
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
MEMORANDUM AND ORDER
*1 Kellenberger et
al. (Kellenberger) petition (Paper No. 84) pursuant to 37 CFR §
1.644(a)(3) seeking waiver of a rule. See also 37 CFR § 1.183. The petition is denied.
On January 11, 1991, an
Examiner-in-Chief entered an order (Paper No. 71) dismissing Kellenberger's
motion for additional discovery (Paper No. 52) holding that Kellenberger failed
to comply with 37 CFR § 1.637(b).
Section 1.637(b) requires a certificate stating that the moving party has
conferred in good faith with the opposing party to resolve by agreement the
issues raised by the motion.
The interference rules
provide that a request for reconsideration may be filed within 14 days of entry
of an order. 37 CFR § 1.640(c).
Accordingly, a timely request for reconsideration of the Examiner-in-Chief's
order was due on or before January 25, 1991.
On February 1, 1991,
Kellenberger mailed a request for reconsideration (Paper No. 78) to the Patent
and Trademark Office. The request was received at the Board of Patent Appeals
and Interferences on February 6, 1991. In the request, Kellenberger
specifically refers to the provisions of 37 CFR § 1.640(c); indeed, Kellenberger notes that he is under an
obligation to discuss the points which he believes the Examiner-in-Chief
misapprehended or overlooked in dismissing the motion. Kellenberger did not
explain why the request was filed out-of-time. In particular, Kellenberger did
not state when the Examiner-in- Chief's order was received.
On February 12, 1991, a panel of the Board
entered an order (Paper No. 80) dismissing the request for reconsideration as
untimely filed, citing 37 CFR §
1.640(c).
On February 25, 1991,
Kellenberger mailed a petition (Paper No. 84) to the Patent and Trademark
Office. It was received at the Board on February 28, 1991. Petitions in
interference cases are governed by 37 CFR §
1.644. Section 1.644(d) provides that a "petition will be decided
on the basis of the record made before the examiner-in-chief or the [Board]
panel and no new evidence will be considered by the Commissioner in deciding
the petition" (emphasis added). Notwithstanding § 1.644(d), Kellenberger's petition is
accompanied by Exhibits A and B, neither of which was presented to the
Examiner-in-Chief or the panel of the Board which considered Kellenberger's
request for reconsideration.
Exhibit A is a copy of
the Examiner-in-Chief's order of January 11, 1991. The exhibit is date-stamped
"received" on Jan. 28, 1991--which is 17 days after the date of the
Examiner-in-Chief's January 11, 1991, order. Exhibit B is a declaration of
Kellenberger's counsel authenticating Exhibit A.
*2 Kellenberger
maintains that relief should be granted because counsel received the
Examiner-in-Chief's order after the 14-day time period for seeking
reconsideration expired.
The rules governing
petitions in interferences specifically provide that the Commissioner does not
consider evidence not first presented to the Examiner-in- Chief or a Board
panel. 37 CFR § 1.644(d). There are
practical reasons for § 1.644(d). If an
Examiner-in-Chief or a panel of the Board considers evidence in the first
instance, a petition may be unnecessary. "Petitions in interferences have
been the source of substantial delay. Section 1.644 attempts to minimize those
delays." Notice of Final Rule, 49 Fed.Reg. 48416, 48425 (Dec. 12, 1984),
reprinted in, 1050 Off.Gaz.Pat. Office 385, 394 (Jan. 29, 1985). One way to
minimize delay is to have evidence considered by the Board in the first instance.
Apart from the fact
Kellenberger did not submit Exhibits A and B to the Board with his request for
reconsideration, he likewise did not tell the Board in the request why it was
being filed out-of-time. In fact, insofar as the Board was concerned, the record
simply showed a late-filed request. Clearly, there was no error in dismissing
the request. Compare Keebler Co. v. Murray Bakery Products, 866 F.2d 1386,
1388, 9 U.S.P.Q.2d 1736, 1738 (Fed.Cir.1989) (Markey) (since Keebler failed to
tell the TTAB it was interested in Murray's "intent," it could not
use intent as a basis for showing "error" by the TTAB; prescience is
not a required characteristic of the board
and the board need not divine all possible afterthoughts of counsel that might
be asserted for the first time on appeal). Kellenberger's failure to advise the
Board in the request why it was not being timely filed does not create an
"extraordinary circumstance" within the meaning of 37 CFR § 1.183. Nor can it be argued that
Kellenberger, through counsel, was unaware of § 1.640(c)--it was cited in his request. In any event, counsel's
unfamiliarity with the 14-day provision would not create an "extraordinary
circumstance." Compare Potter v. Dann, 201 USPQ 574 (D.D.C.1978)
(registered attorney's unawareness of PTO rules does not constitute unavoidable
delay).
ORDER
Upon consideration of
Kellenberger's PETITION TO THE COMMISSIONER UNDER 37 C.F.R. § 1.183 (Paper No. 84), it is
ORDERED that the petition
is denied and it is
FURTHER ORDERED that
Exhibits A and B are returned as improper papers under 37 CFR §
1.618, since they were not first presented to the Examiner-in-Chief or
the Board.
FN1. The notice declaring the interference did not list an
assignee for Kellenberger et al. Nor has any document been submitted pursuant
to 37 CFR § 1.602(b) or (c) indicating an assignee.
However, a paper appointing lead counsel is signed by a registered practitioner
giving an address at the Kimberly-Clark Corporation. It is assumed, therefore,
that Kimberly-Clark Corporation is the assignee. Within twenty (20) days of the
date of this order, Kellenberger et al. should identify the assignee, if any,
of the Kellenberger et al. patent involved in this interference.
FN2. Assignor to The Proctor & Gamble Company, a corporation
of Ohio.
18 U.S.P.Q.2d 1573
END OF DOCUMENT