Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
PETRIE ET AL. [FN1] JUNIOR PARTY
v.
WELSH ET AL. [FN2] SENIOR PARTY
Patent Interference No. 102,636
September 30, 1991
For: Ureido-Containing Wet Adhesion Monomers
and Latexes Derived Therefrom
*1 Application of
Brian C. Petrie et al., Serial No. 07/655,272, filed February 13, 1991.
Patent granted to David
A. Welsh et al. on December 30, 1986, Patent No. 4,632,957, filed September 4,
1984, Serial No. 06/646,733.
TERMATION ORDER
James V. Tura, Robert E. McDonald and
Steven W. Tan for Petrie et al.
Barbara J. Park and William J. Uhl for Welsh et al.
Before Manbeck
Commissioner
Serota
Chairman
Calvert
Vice Chairman
Metz
Examiner-in-Chief
Metz
Examiner-in-Chief
FINAL ORDER TERMINATING INTERFERENCE
The following papers are
before the Board:
(1) JUNIOR PARTY'S MOTION
TO TERMINATE THE INTERFERENCE FOR LACK OF STATUTORY BASIS, OR ALTERNATIVELY,
FOR ENTRY OF JUDGMENT IN FAVOR OF JUNIOR PARTY, filed July 26, 1991 (Paper No.
9).
(2) BRIEF IN SUPPORT OF
JUNIOR PARTY'S MOTION TO TERMINATE THE INTERFERENCE FOR LACK OF STATUTORY
BASIS, OR ALTERNATIVELY, FOR ENTRY OF JUDGMENT IN FAVOR OF JUNIOR PARTY, filed
July 26, 1991 (Paper No. 10).
(3) SENIOR PARTY'S
RESPONSE TO JUNIOR PARTY'S MOTION TO TERMINATE THE INTERFERENCE FOR LACK OF
STATUTORY BASIS OR ALTERNATELY FOR ENTRY OF JUDGMENT IN FAVOR OF JUNIOR PARTY
AND SENIOR PARTY'S MOTION FOR EXAMINER-IN-CHIEF TO REJECT JUNIOR PARTY'S
APPLICATION AS BEING UNPATENTABLE OVER THE PRIOR ART, filed September 3, 1991
(Paper No. 15).
Background
This interference was
declared on June 27, 1991, between
(a) application, Serial
No. 07/655,272, filed on February 13, 1991, naming Brian C. Petrie and Joseph
G. Nasser (Petrie) as inventors and
(b) U.S. patent
4,632,957, issued to David A. Welsh and Rostylaw Dewbenko (Welsh) on December 30, 1986. The patent is
based on application, Serial No. 06/646,733, filed on September 4, 1984.
The Petrie application is
assigned to The Sherwin-Williams Company. The Welsh patent is assigned to PPG
Industries, Inc.
Based on the respective
filing dates of the parties, Petrie was designated as the junior party. At the
time the interference was declared, Petrie was placed under an order to show
cause why judgment should not be entered against him. The basis for the order
to show cause was an Examiner-in-Chief's determination that a showing made by
Petrie under 37 CFR 1.608(b) (1990) was insufficient.
Subsequent to the declaration
of the interference, it came to the attention of the Board of Patent Appeals
and Interferences that Welsh's patent had expired on December 30, 1990, for
failure by Welsh's assignee to pay the maintenance fee required by 35 U.S.C. § 41(b)1. The parties were then asked to
address the authority of the Patent and Trademark Office to continue the
interference (Paper No. 8).
Opinion
I.
*2 The patent
statute (35 U.S.C. § 135(a)) provides
in part:
Whenever an application
is made for a patent which, in the opinion of the Commissioner, would interfere
with any pending application, or with any unexpired patent, an interference may
be declared and the Commissioner shall give notice of such declaration to the
applicants, or applicants and patentee, as the case may be. (Emphasis added)
See also 37 CFR 1.601(i) (1990), which implements § 135(a) and provides for interferences only
between (a) pending applications or (b) one or more pending applications and an
unexpired patent.
Upon review of the facts,
it is manifest that the Commissioner did not have statutory authority to
declare this interference even if he was of the opinion that the Petrie
application claims and the claims of Welsh's expired patent claim the same
patentable invention. Since Welsh's patent had already expired when the
interference was declared and § 135(a)
does not authorize the declaration of an interference between a pending
application and an expired patent, the Board of Patent Appeals and
Interferences does not have subject matter jurisdiction to resolve priority of
invention or patentability in this interference. Accordingly, the interference
is hereby TERMINATED.
II.
We wish to make clear
that termination of this interference without a judgment
under 37 CFR 1.658(a) (1990) is based on the unique fact that the Welsh patent
had expired prior to declaration of the interference. Nothing contained in this
opinion should be construed as suggesting that an interference declared between
a pending application and an unexpired patent will be terminated by any means
other than a judgment under § 1.658(a).
Nor do we reach the issue of how an interference will be resolved between an
application and a patent when the patent expires for failure to pay a
maintenance fee during pendency of the interference.
III.
Welsh has alternatively
requested that we deny Petrie's request for judgment in favor of Petrie.
Welsh's request, as well as Petrie's request for entry of judgment in his
favor, is rendered moot by the termination of this interference. Further,
Welsh's request is actually an attempt to oppose the grant of a patent to
Petrie. It is well-settled that an individual does not have a right to
intervene in the prosecution of a particular application to prevent issuance by
the Patent and Trademark Office of a patent sought by another. Animal Legal
Defense Fund v. Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1692 (Fed.Cir.1991);
Godtfredsen v. Banner, 503 F.Supp. 642, 646, 207 USPQ 202, 207 (D.D.C.1980)
(individual lacks standing to challenge a decision by PTO to issue a patent to another). Welsh may
wish to take advantage of the "protest" provisions of 37 CFR 1.291
(1990). We express no views on the merits of Welsh's contention that Petrie's
claims corresponding to the count are unpatentable over the prior art.
Decision
*3 Upon
consideration of the entire file, and all arguments presented by the parties,
it is
ORDERED that Petrie's
motion to terminate the interference is granted and it is
FURTHER ORDERED that the
interference is terminated.
Harry F. Manbeck, Jr.
Commissioner
Saul I. Serota
Chairman
Ian A. Calvert
Vice Chairman
Andrew H. Metz
Examiner-in-Chief
FN1. Assignor to The Sherwin-Williams Co.
FN2. Assignor to PPG Industries, Inc.
Filed: Feb. 13, 1991
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
ORDER AUTHORIZING THIRD-PARTY PARTICIPATION IN
EXAMINATION OF PATENT
APPLICATION
In an order entered
today, the Board of Patent Appeals and Interferences is terminating the
above-identified interference. In its opinion, the Board notes that Welsh may
wish to file a protest pursuant to 37 CFR 1.291.
Since the facts of this
most unique case establish that there exists an extraordinary situation where
justice requires waiver of a rule, it is, sua sponte,
ORDERED that the
provisions of 37 CFR 1.291 are waived to the extent that they would preclude
full participation by Welsh or his assignee in any protest filed by Welsh or his assignee in the Petrie
application and it is
FURTHER ORDERED that if
Welsh or his assignee files a protest under 37 CFR 1.291 in the Petrie
application (or any continuing application filed by Petrie), Welsh and his
assignee shall be permitted to fully participate in proceedings before the
Primary Examiner and, in the event an appeal is taken, before the Board.
21 U.S.P.Q.2d 2012
END OF DOCUMENT