Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Patent Interference No. 101,974
May 9, 1990
Application of Troy L. Brooks, filed June 30, 1986, Serial No. 880,276.
Patent granted of Robert L. Street, on May 26, 1987, filed April 16, 1986, Serial No. 852,744.
Alfred W. Breiner for Brooks
W. Thad Adams, III for Street
Before Goldstein, R. Smith and Sofocleous
Ronald H. Smith
This interference involves an application of Brooks, application Serial No. 880,276, filed June 30, 1986 and assigned to William T. Burnett and Co., and a patent of Street, Patent No. 4,668,562, issued May 26, 1987 and assigned to Cumulus Fibres, Inc.
The subject matter of the interference relates to a dense, resilient, non-woven fiber batt. The sole count at issue corresponds exactly to claim 1 of the Street patent and reads as follows:
A dense, resilient, non-woven staple polymer fiber batt comprising a plurality of overlayed, relatively thin webs, each of said webs comprising at least first and second staple polymer fiber constituents blended to form a homogeneous intermixture of said fiber, said first fiber constituent having a relatively low predetermined melting temperature and said second fiber constituent having a relatively high predetermined melting temperature, the fibers of said first fiber constituent being fused by heat to themselves and to the fibers of said second fiber constituent to intimately interconnect and fuse the fibers within the web layers and each of said web layers to adjacent web layers while said web layers are in a vacuum-compressed state, said heat being sufficient to melt the fibers of the first fiber constituent but not high enough to melt the fibers of the second fiber constituent whereby, upon cooling, the fibers of the first fiber constituent retain a plastic memory of the batt in its compressed state to hold the interconnected web layers together at the compressed thickness of the batt, and the fibers of the second fiber constituent retain the plastic memory of said fibers in their non-compressed state and thereby provide substantial resilience to said batt in counteracting compressive forces exerted on said batt by the fibers of the first fiber constituent.
The claims of the parties which correspond to count 1 are:
Brooks: Claims 1-23
Street: Claims 1-6
The Examiner-in-Chief (EIC) in his decision on motions (Paper No. 20) granted Brooks' motion for judgment on the ground that Street's claims 1-6 corresponding to the count are unpatentable to Street. In addition the EIC granted both Street's motion to designate Brook's claims 1-17 as corresponding to the count and Street's motion for judgment that Brook's claims 1-23 are unpatentable to Brooks. Further, the EIC dismissed as moot Street's motion for judgment on the ground of no interference-in-fact in view of the decisions holding the claims of both parties unpatentable. Pursuant to 37 CFR 1.640(d)(1), both Brooks and Street were ordered to show cause why judgment should not be entered against them in accordance with the EIC's decisions.
*2 Both parties filed responses to the order wherein they attempted to show good cause why judgment should not be entered in accordance with the EIC's decision. Neither party requested that a final hearing be set; nor did either party request a testimony period. As set forth in the Commissioner's Notice of December 8, 1986, 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.
Street's Response to the Order to Show Cause
The EIC granted Brook's motion for judgment that Street's claims 1-6 corresponding to the count are unpatentable to Street "based on the admissions of Robert L. Street." The motion was based on certain material facts including (1) the count of the interference and Street's claims corresponding thereto are drawn to a dense, resilient, non-woven, staple polymer fiber batt, i.e., a product; (2) Robert L. Street admitted in an affidavit attached to the motion that Brooks was the inventor of the fiber batt product and that his (Street's) only contribution was directed to a particular process of making the batt; and (3) since the count and Street's claims 1-6 are not directed to a process, the invention of the count (Street's claims 1-6) is not the invention of Robert L. Street. (Cf. Brooks' motion for judgment, Paper No. 11). In his decision granting the motion, the EIC found the "material facts submitted by Brooks in support of the motion are sufficient to support the granting thereof" and pointed out that, as noted by Brooks in his reply to Street's response, Street did not oppose the motion in his response thereto, nor did Street contest the material facts placed in evidence by Brooks.
On page 2 of his response to the order to show cause, Street urges that the conclusion that Brooks' motion was unopposed was erroneous, and that Street "opposed and contested the material facts in party Brook's [sic] motion." Street states that on the same day Brooks filed the motion for judgment, Street filed a motion for judgment that no interference-in-fact exists. According to Street, his motion is "based on the exact same facts, including the Street Affidavit, as argued by Party Brooks in its Motion for Judgment." Street urges that the product claims contained process limitations based on an invention by Street and that these limitations patentably distinguished the product of Street's claims 1-6 from the invention made by Brooks. Street contends further that "the exact same issues and facts are determinative of both Motions."
*3 We disagree with Street's contention that he opposed and contested the material facts presented in Brooks' motion for judgment. The rule that authorizes oppositions to motions, 37 CFR 1.638(a), requires that "[a]n opposition shall (1) identify any material fact set forth in the motion which is in dispute and (2) include an argument why the relief requested in the motion should be denied." Street's "response" to the motion for judgment does not meet either requirement, nor does it even provide any indication the Street opposed the motion. The failure of Street to oppose the motion is evident from a reading of his response which follows:
Response to Party Brooks' Motion for Judgment
This paper is filed in response to Party Brooks' Motion for Judgment filed on November 30, 1988. Upon review of this paper, Party Street, the Senior Party in this proceeding, believes that its Motions filed on November 30, 1988 are fully responsive to Party Brooks' Motion. For this reason, Party Street does not believe that any further submission is required.
Moreover, it is apparent that Street's contention that his motion for judgment, which was not specifically referred to in his "response," is "based on the exact same facts, including the Street Affidavit," as Brooks' motion, does not identify any material fact in dispute as required by the § 1.638(a); rather, the quoted statement indicates that there are no facts in dispute. Nor does Street's motion for judgment include an argument why the relief requested by Brooks should not be granted.
We find the attorney argument by Street to the effect that Street's claims 1- 6 contain process limitations which patentably distinguish the product of Street's claims from the product claimed by Brooks untenable. As noted by Brooks in his response, such attorney argument does not rebut "the admission by Robert L. Brooks that he is not the inventor of the densified batting product defined in the Count of the interference" and that his only contribution was in a particular process of making the batt. It is well settled that argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 193 USPQ 17 (CCPA 1977).
Street's argument that the facts submitted by Brooks are inadequate as a basis for judgment because Street's claims contain the process limitation "vacuum-compressed" is unpersuasive. Street argues that the product prepared by the Street method is patentably distinct from the product claimed by Brooks. However, Street has not presented sufficient evidence to establish such patentable distinctness. The primary examiner who initiated the interference determined that Street's product was the same patentable invention as the product claimed by Brooks, and the burden of establishing that Street's claims are patentably distinct is on Street. We find that Street has not met his burden; rather, he has admitted that his only contribution is in a process for making the batt.
*4 While Street is correct in urging that product-by-process claims have been approved to define a product, it is also well established that if the product of the product-by-process claim is the same as or obvious from a prior art product, the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed.Cir.1985). Here the primary examiner found Street's product to be the same or obvious from that of Brooks, and Robert L. Street has admitted that Brooks' product was prior art to him and that his only contribution was in a process for making the batt. In the circumstances presented here, persuasive evidence of patentable distinctness would be required to establish that, contrary to the finding of the primary examiner and to the admission of Robert L. Street, the product claimed by Street was a separate patentable invention from that of Brooks. Street has failed to present such evidence. Indeed, although Street urges that the Street product is described at column 7 of the patent as "a homogeneous structure ... while being held in a relatively dense, compressed state nevertheless has considerable resilience," it is apparent that Brooks describes the same properties for his product on pages 7-8 of his specification, i.e., a "compressed thermo-bonded product having uniformity throughout" which "does not have a greater densification at its surfaces or have a skin" and which has "the density and resilient characteristics essential" (page 19). Street has presented no evidence of any patentable difference in his product as compared to the product disclosed by Brooks.
We fully agree with the decision of the EIC that the issue of no interference-in-fact raised by Street is moot in view of the decision that the claims of both parties are unpatentable. Patentability is a threshold question which is determinative of whether an interference exists. Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976). No purpose is served by deciding interference issues when the claims of one or both parties have been determined to be unpatentable.
Arguments to the effect that Brooks "cannot make the count" or that Brooks' 37 CFR 1.608 showing was inadequate are not responsive to the basis of the order to show cause against Street and therefore cannot serve to avoid judgment against Street for the reason set forth by the EIC in the order to show cause. Moreover, it is established practice that once the showing has been evaluated and the interference is allowed to go forward, there "is no occasion for reversion to that stage at behest of senior patentee." Walsh v. Sakai, 167 USPQ 465 (Comm'r 1970). Nor is there any requirement in the new interference rules (37 CFR 1.601 et seq) that a party "make the count." Rather, pursuant to 37 CFR 1.607(a) an applicant may request an interference by "presenting a proposed count" and "presenting at least one claim corresponding to the proposed count" and where the claim does not correspond exactly to the proposed count "explaining why such claim corresponds to the proposed count."
Brooks Response to the Order to Show Cause
*5 We have carefully considered the response by Brooks to the show cause order issued against him, and we have decided that we agree with the EIC that judgment should also be rendered against Brooks that his claims 1-23 are unpatentable to Brooks for the reasons set forth by the EIC. Brooks sets forth in his response "procedural aspects" and "substantive reasons" why judgment against Brooks is improper. Procedurally, Brooks urges that once it was decided that Street's claims were unpatentable, all the Street motions should have been dismissed and only Street should have been put under an order to show cause. Brooks urges that the granting of Street's motion to designate Brooks' claims 1-17 as corresponding to the count and Street's motion for judgment that Brooks' claims 1-23 are unpatentable to Brooks is a denial of due process in that it violates 35 USC 132 which requires an examination, notice and a reexamination.
We disagree with Brooks' contentions. One purpose of the 1984 amendment to 35 USC 135 and the new rules of practice (37 CFR 1.601 et seq) was to permit the board to decide all patentability issues in an interference, if properly raised by the parties. As set forth in MPEP 2300.02, "[t]he object of the interference will be to resolve all controversies as to all interfering subject matter defined by one or more counts." It would be contrary to the object of interference practice to only decide the patentability questions raised by one party and not the other, as suggested by Brooks, and such would frustrate the alleged purpose of the changes in the statute and the rules. Cf. Kwon v. Perkins, 6 U.S.P.Q.2d 1747 (BPAI 1988).
In his argument with respect to due process, it is apparent that Brooks is confusing the statutes and rules that relate to ex parte examination with those that relate to interference practice. Thus, Brooks urges that 35 USC 132 relating to ex parte examination of patent applications was violated by the interference procedure followed in this proceeding. However, interference proceedings are governed by 35 USC 135 and by rules 1.601 et seq, which begin as follows: "§ 1.601 This subpart governs the procedure in patent interferences in the Patent and Trademark Office." Suffice it to say, Brooks has not alleged that any interference rule has been violated. We disagree with Brooks' contention that he was not accorded due process.
The EIC granted Street's motion for judgment that Brooks' claims 1-23 are unpatentable to Brooks on two grounds, a prior public use or offer to sell under 35 USC 102(b) and unpatentabilty over the disclosure of the '036 patent. With respect to the prior art '036 patent the EIC noted in his decision that Brooks admitted that Brooks' claims 1-7 and 18-23 are unpatentable over the disclosure of '036, and the EIC indicated that he agreed with that determination by Brooks. Since all Brooks claims 1-23 were designated as corresponding to the count, i.e., they are all drawn to the same patentable invention, the EIC held that they all stand or fall together.
*6 Brooks urges in his response to the order to show cause that "[t] echnically" he did not admit that his claims 1-7 and 18-23 were unpatentable over the disclosure of the '036 patent; rather, Brooks contends that he said "it appeared, or that he believed" that these claims were unpatentable, but the decision was left to the EIC. Brooks further contends that such admission did not extend to claims 8-17, which claims he urges are patentable over the disclosure of '036. Brooks contends that the mere fact that claims 8-17 fall within the scope of the count "does not mean that those claims are unpatentable" and urges that he "must be permitted an opportunity to establish that difference."
We agree with the EIC's conclusion that Brooks effectively admitted that claims 1-7 and 18-23 were unpatentable over the '036 reference and with the EIC's independent determination that the indicated claims were in fact unpatentable over the '036 reference. Moreover, it is well settled in interference practice that a judgment of unpatentability of claims corresponding to a count extends to all the claims designated as corresponding to that count, absent evidence to show patentable distinctness together with a motion to designate such allegedly distinct claims as not corresponding to the count. Kwon v. Perkins, supra at 1751. An expanded panel in Kwon held that Kwon was not entitled to argue a patentable distinction between some of his claims and the count because he did not properly raise the issue during the motion period. 37 CFR 1.655(b).
§ 1.655(b) provides that a party is not entitled to raise a matter for consideration at final hearing unless "(2) the matter was properly raised by a party in an opposition to a motion under §§ 1.633 or 1.634 and the motion was granted over his opposition." On page 15 of his response to the order to show cause Brooks acknowledges that he filed no objection (no opposition) to the Street motion to redefine the interference by designating claims 1-17 as corresponding to the count. Accordingly, Brooks is not entitled to urge at final hearing that claims 8-17 are drawn to a patentably distinct invention from the count. 37 CFR 1.655(b); Kwon v. Perkins, supra. If Brooks believed that claims 8-17 were distinct from the invention of the count, the opportunity for him to present evidence to substantiate that belief was during the motion period in response to Street's motion to designate claims 8-17 as corresponding to the invention of the count. Brooks presented no such evidence and indeed did not even oppose the designation of claims 8-17 as corresponding to the count. It is noted that Brooks has attached a declaration to his response relating to claims 8-17 and the disclosure of the '036 patent. However, such evidence is entitled to no consideration at final hearing due to the failure of Brooks to comply with 37 CFR 1.655(b) and 1.639(a). Rule 1.639(a) plainly requires that "[p]roof of any material fact alleged in a motion, opposition, or reply must be filed and served with the motion, opposition, or reply." The rules, which clearly require any evidence to be filed during the motion period, are binding on this Board, and strict adherence thereto is necessary to assure orderly procedure in interference proceedings.
*7 With respect to the EIC's decision granting the motion for judgment that Brooks' claims are also unpatentable on the ground of prior public use or offer to sell under 35 USC 102(b), Brooks notes that the evidence is the chronology put together by Troy L. Brooks, and that there is no other evidence. Brooks urges that the chronology "does not contain any admission by Brooks" that the products were on sale or in public use, and the assertion that there was is contrary to the declaration by Brooks made with the filing of the application. Brooks further contends that the written chronology of Brooks which does not contain an admission is not adequate evidence to meet the heavy burden required to establish a public use or sale.
We have reviewed the written chronology of Brooks, including the entries:
"9/26/84 Gen. Foam--To sell low melt batt"
"5/28/85 To Gen Foam to discuss pricing and actual labor savings"
"6-14-85 Order for 100 samples from Gen Foam"
We agree with the EIC that these entries by Brooks are sufficient to establish, prima facie, that the densified batt was on sale more than one year prior to Brooks' June 30, 1986 filing date.
Brooks had the opportunity during the motion period to oppose the motion for judgment based on prior sale or public use, and Brooks filed a declaration with his opposition stating that "although certain references are made in the chronology with respect to sales activity, no sales or offers of sale of an unrestricted nature were made of densified batting prior to at least about December 1985" (emphasis added). We agree with the EIC that the declaration by Brooks was inadequate to rebut the admitted disclosure in the chronology of sales activity more than one year prior to Brooks' filing date. Brooks declaration indicated that the earlier sales or offers were "restricted" but presented no evidence to support his conclusory statement, nor did he even explain what he meant by the term "restricted." By withholding the evidence relating to the prior sales and withholding the basis or explanation for his conclusion that the earlier sales and offers were "restricted," Brooks would make himself the sole arbiter of the motion for judgment. We agree with the EIC that Brooks response to the motion for judgment was insufficient to rebut the prima facie case of prior public use or offer to sell.
In his response to the order to show cause, Brooks indicates that "he can explain each entry in the chronology if any particular entry is considered critical." We note, however, that the time for presenting evidence in opposition to the motion for judgment was with the opposition. 37 CFR 1.639(a).
For the foregoing reasons, judgment is hereby entered against both Street and Brooks. Accordingly, Street is not entitled to his patent containing claims 1-6 corresponding to the count, and Brooks is not entitled to a patent containing claims 1-23 corresponding to the count.
Ronald H. Smith