Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
OKADA ET AL., JUNIOR PARTY
v.
HITOTSUMACHI, SENIOR PARTY
Interference No. 102,109
April 5, 1990
Melvin Kraus, Esq.
*1 Antonelli, Terry, Stout & Kraus
Henry M. Zykorie, Esq.
Wenderoth, Lind & Ponack
Harry F. Manbeck, Jr.
Assistant Secretary and Commissioner of Patents and Trademarks
Background
Junior party Okada et al.
(Okada) has filed a PETITION UNDER 37 CFR §
1.644(a)(1) (Paper No. 42) asking the Commissioner to order an
Examiner-in- Chief to grant its motion (Paper No. 33) requesting a testimony
period. The motion was denied originally by the Examiner-in-Chief (Paper No.
37) and by the Board of Patent Appeals and Interferences (Board) on reconsideration
(Paper No. 38), because Okada did not show, during the preliminary motion
period, that a testimony period was needed to resolve any motion. Likewise,
Okada has not demonstrated that necessary proofswere unavailable at the time of
the preliminary motions. The petition has been opposed by senior party
Hitotsumachi (Paper No. 39). The petition is before the Commissioner, having
been certified by the Examiner-in-Chief. 37 CFR § 1.644(a)(1).
The question is whether
the Board properly denied Okada's motion requesting a testimony period (Paper
No. 43) to present evidence in connection with (1) a preliminary motion to
designate claims of senior party Hitotsumachi as not corresponding to count 1
[FN1] and (2) the senior party's motion to redefine the interference subject
matter. [FN2]
During ex parte
prosecution prior to the interference, claims of Okada were rejected by a Primary Examiner over
Hitotsumachi's published European patent application. Okada alleges that its
disclosure is "substantially identical"D' to the Hitotsumachi
application involved in this interference. Upon amendment of the claims and
traverse of the rejection, the examiner allowed Okada's amended claims,
including what is now claim 1 of his patent.
Subsequently, the Primary
Examiner determined that an interference existed between claim 1 of Okada's
patent and claims of the Hitotsumachi application. As declared, the
interference involved count 1. Okada's claim 1 corresponded exactly to count 1.
In a decision on preliminary motions (Paper No. 29), and over Okada's
opposition, the Examiner-in-Chief redefined the interference by substituting
count 2 for count 1. Count 2 is a broader version of count 1 which does not
include limitations added to Okada's patent claim 1 during ex parte prosecution
to secure allowance over Hitotsumachi's published European patent application.
The Examiner-in-Chief decided that some of senior party Hitotsumachi's claims
corresponding to count 1 lacked support for the limitations of count 1 (Paper
No. 29, paragraph V). However, the Examiner-in- Chief considered those
limitations immaterial to patentability (Paper No. 29, paragraph I). In effect,
the Examiner-in-Chief determined that the invention of count 1 would have been
obvious over the invention of count 2.
*2 Okada urges
that the Primary Examiner allowed claim 1 of its patent to issue over
Hitotsumachi's European published patent application, because patented claim 1 was drawn to patentably
distinct subject matter. He urges that no objective evidence has been presented
by Hitotsumachi to rebut the presumption of validity of patented claim 1; an
examiner had initiated interference proceedings presuming support for all the
limitations of Okada's patented claim 1 in Hitotsumachi's application; Okada
never had an opportunity to present objective evidence of patentable
distinction between his issued claims and the teaching of Hitotsumachi; and the
denial of its motion requesting a testimony period was therefore improper. The
Examiner-in-Chief relied on Orikasa v. Oonishi, 10 USPQ2d 1996 (Comm'r Pat.
1989), as precedent for denying Okada's motion. Okada cited and relied on
Verbruggen v. Wells, 5 USPQ2d 1983 (Comm'r Pat. 1987) and Nabial v. May, 2
USPQ2d 1452 (Bd. Pat. App. & Int. 1986), in support of his motion. In view
of a perceived conflict between Orikasa, on the one hand, and Verbruggen and
Nabial, on the other hand, the Examiner-in-Chief certified Okada's petition to
the Commissioner.
Discussion
Rule 1.639(a), 37 CFR
§ 1.639(a), requires evidence to be
filed, or to be on file in the Patent and Trademark Office to support a
preliminary motion under 37 CFR §
1.633(c) or an opposition to such a motion. A good faith effort must be made to submit evidence to
support a preliminary motion or opposition when the evidence is available.
Orikasa v. Oonishi, supra, at 2000 n.12. Therefore, the denial of Okada's
motion requesting a testimony period by the Examiner-in-Chief was improper only
if Okada has shown that the evidence it intends to present was unavailable at
the time it filed preliminary motions or oppositions under 37 CFR § 1.633(c).
Okada has not suggested
that proposed evidence was not available at the preliminary motion stage of
this interference. Rather, in support of his position at the preliminary motion
stage, Okada relied primarily on findings by the Primary Examiner that its
claims were patentably distinct from the disclosure of Hitotsumachi's published
European patent application. Okada also relied on the presumption of validity
expressed in 35 U.S.C. § 282. That
reliance was manifestly misplaced. The "presumption of validity"D' of
§ 282 is not applicable in
interferences. Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd. Pat. App. & Int.
1988). Decisions of a primary examiner during ex parte prosecution are likewise
not binding on the Board of Patent Appeals and Interferences in inter partes
proceedings. Block v. Sze, 458 F.2d 137, 173 USPQ 498 (CCPA 1972); Heymes v.
Takaya, 6 USPQ2d 1448, 1454 (Bd. Pat. App. & Int.), reh'g denied, 6 USPQ2d
2055 (Bd. Pat. App. & Int. 1988). The burden of establishing no
interference-in-fact clearly sat with Okada. Aelony v. Arni, 547 F.2d 566, 192
USPQ 486 (CCPA 1977); Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir.),
cert. denied, 469 U.S. 872 (1984); Takaya, supra at 1451. The Primary Examiner
may have been convinced that Okada's claims were patentable over Hitotsumachi's
published European patent application, but the Examiner-in-Chief could not find
necessary proofs to support Okada's preliminary motions and oppositions. Since
there is no issue as to the prior availability of the proposed proofs to be
presented in a testimony period, Okada's motion requesting a testimony period
to untimely provide evidence in support of patentable distinction between the
claims of its patent and broadened count 2 was properly denied.
*3 To the extent
that Verbruggen v. Wells, 5 USPQ2d 1983 (Comm'r Pat. 1987) and Nabial v. May, 2
USPQ2d 1452 (Bd. Pat. App. & Int. 1986) are inconsistent with the views
expressed herein and in Orikasa v. Oonishi, 10 USPQ2d 1996 (Comm'r Pat. 1989),
both Verbruggen and Nabial are overruled.
The Okada petition is
denied.
There is a possibility
that confusion existed as a result of the existence of Verbruggen, Nabial, and
Orikasa. Accordingly, notwithstanding the Board's correct decision, now
affirmed on petition, the Examiner-in-Chief or the Board is authorized, upon
such showing as they deem sufficient, to set a testimony period in this case to
permit Okada to present testimony. Should Okada seek testimony, he should
present within ten (10) days a detailed proffer of the expected testimony --
not broad conclusions as to that which the testimony
will show. [FN3]
ORDER
Upon consideration of the
Okada petition and the Hitotsumachi opposition, it is
ORDERED that Okada's
petition under 37 CFR § 1.644(a)(1) is
denied, without prejudice to the setting of a testimony period if the
Examiner-in-Chief or the Board be so advised.
FN1. See Paper No. 14 and 37 CFR § 1.633(c)(4).
FN2. See Paper No. 10 and 37 CFR § 1.633(c).
FN3. The fee of $120.00 for this petition has been charged to
Deposit Account No. 01-2135 as requested in the petition.
16 U.S.P.Q.2d 1789
END OF DOCUMENT