Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
GOUTZOULIS, JUNIOR PARTY
v.
ATHALE, SENIOR PARTY
Interference No. 102,011
March 30, 1990
Harry F. Manbeck, Jr.
Assistant Secretary and Commissioner of Patents and Trademarks
DECISION ON PETITION
*1 Senior Party
Athale (hereinafter "Senior Party") petitions under 37 CFR § 1.644(a)(2) seeking to invoke the
supervisory authority of the Commissioner to review an interlocutoryorder of
the Board of Patent Appeals and Interferences ("Board"). The Board
ultimately entered judgment in favor of the
Junior Party Goutzoulis (hereinafter "Junior Party").
Specifically, the Senior
Party requests the Commissioner to:
(1) vacate the Board's
judgment;
(2) overrule as a
matter of law a decision on preliminary motion under 37 CFR § 1.633(a) holding
the Senior Party's claims corresponding to count 1 of the interference
unpatentable under 35 U.S.C. § 102(a)
over a printed publication authored by the Junior Party; and
(3) remand the
interference to the examiner-in-chief for such action as may be appropriate.
The petition is granted
to the extent of declaring that improper procedure was used to resolve the
interference, authorizing the interference to be reopened, and remanding the
interference to the jurisdiction of the Board for further proceedings.
Background
This is an interference
between a pending application of the Senior Party and a patent of the Junior
Party.
The Senior Party's
preliminary statement alleges conception in January 1984. The Junior Party's
preliminary statement alleges conception in October 1983.
The Junior Party filed a
preliminary motion for judgment under 37 CFR §
1.633(a) alleging that the Senior
Party's claims corresponding to count 1 (the sole count of the interference)
are not patentable under 35 U.S.C. §
102(a) over a printed article authored by the Junior Party. The article
was published on September 1, 1984, less than one year before the filing dates
of both parties.
The Senior Party opposed
on the ground that the motion, in effect, raised an issue of priority and that
37 CFR § 1.633(a) provides that
priority cannot be raised by preliminary motion. The Junior Party's reply
states that the motion is based on patentability under 35 U.S.C. § 102(a) and the "fact that the
publication is authored by the party Goutzoulis does not transform the issue of
patentability into a priority issue."
The examiner-in-chief
granted the preliminary motion, stating:
The fact that the cited
publication could possibly be used by the junior party as evidence in an
attempt to establish an earlier date of invention at final hearing does not
remove the publication as a reference against [the Senior Party].
*2 The examiner-in-chief also issued an Order to Show Cause why
judgment on the record as to all of the claims of the Senior Party should not
be entered against the Senior Party.
The Senior Party filed a
petition to the Commissioner under 37 CFR §
1.644(a)(1) requesting the Commissioner to overrule as a matter of law
the interlocutory order entered by the
examiner-in-chief. The Senior Party contended that the preliminary motion
raised an issue of priority of invention which is specifically barred by 37 CFR
§ 1.633(a). The examiner-in-chief denied
certification of the petition and required the Senior Party to submit a
response to the previous Order to Show Cause.
The Senior Party filed a
response to the Order to Show Cause under protest. The examiner-in-chief found
the Senior Party's evidence sufficient to overcome the September 1, 1984, date
of the Junior Party's article; however, the examiner-in-chief required the
Senior Party to show good cause why theevidence was not submitted with the
original opposition to the Junior Party's preliminary motion.
The Senior Party filed a
Showing of Good Cause stating that evidence of invention had not been submitted
with the opposition because it was relying on a good faith interpretation of
the Rules of Practice and its legal rights to oppose what it considered to be
an improper preliminary motion.
On December 18, 1989, the
Board rendered a decision concluding that the Senior Party's presentation of
evidence was not timely. Judgment as to the subject matter of count 1 was
awarded to the Junior Party. The Senior Party's petition under 37 CFR § 1.644(a)(2) was filed within sixty (60)
days, viz., on February 15, 1990.
A final decision by the
Board from which no appeal can be taken constitutes the final refusal by the
Patent and Trademark Office ("PTO") of the claims involved in the
interference. 35 U.S.C. § 135(a).
However, the Commissioner may, in the exercise of his supervisory authority
over duties respecting the granting and issuing of patents pursuant to 35
U.S.C. § 6(a), review interlocutory
non-merits decisions of the Board in interferences on petition. 37 CFR § 1.644(a)(2); Kingsland v. Carter Carburetor
Corp., 168 F.2d 565, 77 USPQ 499 (D.C. Cir.), cert. denied, 335 U.S. 819, reh'g
denied, 335 U.S. 864 (1948). Petitions will not be considered which raise
issues relating to the merits of priority of invention or patentability, which
by 35 U.S.C. § 7(b) and § 135(a) are committed to the Board. 37 CFR
§ 1.644(a)(2); Omori v. Ohsemachi, 230
USPQ 633, 634 (Comm'r Pat. 1985); cf. Bayley's Restaurant v. Bailey's of
Boston, Inc., 170 USPQ 43, 44 (Comm'r Pat. 1971) (similar rationale in
trademark case). As a general rule, as stated in Goss v. Scott, 1901 Dec.
Comm'r Pat. 80, 84 (Comm'r Pat. 1901):
*3 This
discretionary power of the Commissioner should be exercised, however, only in
exceptional cases, and then only to correct some palpable error which is clear
and evident on its face.
Proper petitions to exercise the Commissioner's supervisory
authority have the salutary effect of
establishing uniform operating procedures within the Patent and Trademark
Office and of conserving judicial resources until cases have been handled in
accordance with the rules. Orikasa v. Oonishi, 10 USPQ2d 1996, 1997 (Comm'r
Pat. 1989). The instant case justifies the exercise of the Commissioner's
supervisory authority.
Interferences are
conducted in the Patent and Trademark Office in accordance with the rules (37
CFR § 601 et seq.) promulgated pursuant
to the Commissioner's rulemaking authority under 35 U.S.C. § 6(a). The Commissioner's supervisory duties
under 35 U.S.C. § 6(a) respecting the
granting and issuing of patents include an interest in seeing that those rules
are administered properly. Because proper procedure was not followed in this
case under the "new" interference rules, it is appropriate that it be
reopened and that it be remanded to the Board for further action consistent
with this decision.
Timeliness of the petition
A petition seeking to
invoke the supervisory authority of the Commissioner in an interference must be
filed after the Board has entered a final decision. The Senior Party's petition
was filed on February 15, 1990, after entry of the Board's final decision on
December 18, 1989. The Junior Party has not filed a response. Although in retrospect it is not
clear, 37 CFR § 1.644(b) was intended
to set a 15-day period for filing petitions under § 1.644(a)(2), as well as petitions under § 1.644(a)(1). The purpose of the 15-day
periods for filing and response is to permit a petition to be filed, responded
to, and decided prior to expiration of the two-month period for seeking
judicial review. Orikasa, 10 USPQ2d at 1997. The filing of a petition normally
does not automatically stay the proceeding, 37 CFR § 1.644(c), or extend the time for filing a notice of appeal.
In this case, since
§ 1.644(b) is not clear in requiring a
15-day period for filing a petition under §
1.644(a)(2), and since the interference will be remanded to the Board,
the petition is being construed as a request to extend the time for seeking
judicial review pending a decision on the petition. Henceforth, parties in
interference are advised to file petitions under § 1.644(a)(2) within 15 days after entry of the Board's final
decision and to also include, as part of the petition or in a separate paper, a
request for extension of time to seek judicial review.
Opinion
*4 One objective
of the "new" interference rules is to resolve all controversies
between opponents in interference cases. Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg.
48416, col 3 (Dec. 12, 1984), reprinted in, 1050 Off. Gaz. Pat. Office 385,
col. 3, (Jan. 29, 1985). In order to accomplish this significant objective,
there are many instances where it will be necessary to consider at final
hearing all issues which are raised by the parties. Thus, in many instances it
will be necessary for the Board to resolve both priority and patentability.
Kwon v. Perkins, 6 USPQ2d 1747 (Bd. Pat. App. & Int. 1988), aff'd, 886 F.2d
325, 12 USPQ2d 1308 (Fed. Cir. 1989).
A party can file a
preliminary motion for judgment on the ground that the opponent's claim
corresponding to a count is not patentable to the opponent. 37 CFR § 1.633(a). With two exceptions, the motion
may raise any issue of patentability. The two exceptions are: (1) priority of
invention of the subject matter of a count by the moving party as against any
opponent; or (2) derivation of the subject matter of a count by an opponent
from the moving party. Id.; 49 Fed. Reg. at 48424, 1050 Off. Gaz. Pat. Office
at 393. These exceptions are directed to issues which are traditional
"priority" issues, e.g., which inventor made the invention first or,
when derivation is an issue, who made the invention. The reason behind this
practice is to eliminate the need for a "mini-trial" on issues
relating to conception, diligence, actual reduction to practice and/or
derivation during the preliminary motion phase of a "new" rule
interference. Another reason is avoidance of premature discovery of a party's case on priority.
The issue presented in
this particular case concerns the proper procedure for the Board to follow when
an issue of patentability under 35 U.S.C. §
102(a) or § 102(e) is presented
by preliminary motion. To overcome an allegation of unpatentability based on §
§ 102(a) and 102(e), a party need only
antedate the effective date of the reference not an opponent's date of
invention. This kind of "antedating" does not involve
"priority" in the usual sense. Nevertheless, a party must establish
"prior invention" to remove a reference under § 102(a) or §
102(e). In this respect, the antedating effort parallels those for
establishing "priority of invention." In re Moore, 444 F.2d 572,
578-79, 170 USPQ 260, 266 (CCPA 1971); In re Eickmeyer, 602 F.2d 974, 978-79,
202 USPQ 655, 660 (CCPA 1979). Under the "new" interference rules, it
was not contemplated that the Board would consider those priority-type issues
during the course of deciding preliminary motions.
*5 A party can
overcome a reference under § 102(a) or
(e) by an affidavit under 37 CFR § 131
showing prior invention. Where the interference has been declared, a
preliminary statement alleging invention prior to the date of a reference can
be accepted as a substitute for an affidavit under Rule 131, making out a prima
facie case of prior invention justifying the setting of a testimony period to
take proofs. See Forsyth v. Richards, 1905 Dec. Comm'r Pat. 115 (Comm'r Pat.
1905) (where it is alleged opponent's claim is anticipated, but preliminary statement alleges date of
invention prior to reference, interference will not be dissolved). Although the
preliminary statement does not necessarily contain the evidence required for a
sufficient Rule 131 affidavit, there are good reasons why, as a matter of
practice in an interference, the Board should accept the allegations in the
preliminary statements at the preliminary motion stage rather than entering a
judgment based on unpatentability under §
102(a) or (e) in the absence of a Rule 131 affidavit.
First, the test for
sufficiency of a Rule 131 affidavit parallels (albeit is not identical to) that
for determining priority under 35 U.S.C. §
102(g). Moore and Eickmeyer, supra. The Board will therefore be required
to address priority issues of conception, reduction to practice and diligence
to determine whether the party has established priority and/or overcome the
date of the reference. This requires the type of "mini-trial" on
priority issues which the exception to 37 CFR § 1.633(a) was intended to avoid.
Second, in an ex parte
proceeding, one may antedate a reference by a showing which is less than that
which would be required for a priority contest. Moore, 444 F.2d at 579-80, 170
USPQ at 267; Eickmeyer, supra; In re Mulder, 716 F.2d 1542, 1545, 219 USPQ 189,
193 (Fed. Cir. 1983) ("Interferences involve policy questions not present
when antedating a reference."). It is therefore unlikely that the showing
in a Rule 131 affidavit will be of material benefit
later in the interference proceeding.
The parties do not, in
general, know when they submit a preliminary motion under 37 CFR § 1.633(a) whether the other party's
allegations in the preliminary statement will antedate a reference under 35
U.S.C. § 102(a) or § 102(e). Thus, these motions are proper, as
in the instant case, where the reference has been authored by one of the
parties. However, since unpatentability under § 102(a) or § 102(e)
involves issues of priority as to a date, albeit not to the date of invention,
the Board should consider the allegations of the preliminary statements and
only enter an order to show cause based on unpatentability under § 102(a) or §
102(e) where there is no alleged "prior invention." This
practice should be followed regardless of whether the prior art is § 102(a) prior art of one of the parties in
the interference, or § 102(a) or § 102(e) prior art by a third party. The
practice should also be followed regardless of whether the § 102(a) or §
102(e) prior art is applicable to one or all parties, and regardless of
whether the prior art is cited by the junior or senior party.
*6 In this case,
the Board did not properly apply "new" rule interference procedure
when it concluded that a party at the preliminary motion stage of an
interference is under an affirmative obligation to demonstrate that he can
overcome the date of a reference which does not constitute a statutory bar
where the preliminary statement alleges a date of invention before the effective date of the reference. The Board's
"final" decision was apparently entered without considering the
Senior Party's preliminary statement. Inasmuch as the Senior Party's
preliminary statement alleges that he conceived his invention prior to the
effective date of the Junior Party's reference, coupled with allegations of
diligence between conception and constructive reduction to practice, the
preliminary statement establishes a prima facie case of prior invention. Had
the Board followed proper procedure, it would have deferred consideration of
the Junior Party's motion for judgment based on patentability until priority
testimony had been taken. If the Senior Party had established at final hearing
that he made the invention prior to the date of the Junior Party's printed article,
a fortiori, his claim corresponding to the count could not be unpatentable over
the printed article. [FN1]
Decision
The petition is granted
to the extent that the interference will be remanded to the Board so that the
Board
(1) may reopen the
interference;
(2) set a testimony
period for the parties to present priority evidence; and
(3) take further
proceedings consistent with the views expressed in this opinion.
FN1. To the extent that the procedure followed by the Board in this
case is consistent with the procedure followed in Guglielmino v. Winkler, 11
USPQ2d 1389 (Bd. Pat. App. & Int. 1989), appeal pending, No. 89-1571 (Fed.
Cir. docketed July 3, 1989), Winkler does not represent proper procedure and is
no longer to be followed.
15 U.S.P.Q.2d 1461
END OF DOCUMENT