BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 DEWEZ ET AL. v. SCHLEIMER ET AL. Patent Interference No. 101,545

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,545

February 12, 1987


Before Urynowicz, Boler, and R. Smith














 Schleimer et al. request reconsideration (Paper No. 38) of the decision by the EIC with respect to Motion (A)(1) in Paper No. 35.



 Dewez et al. request reconsideration (Paper No. 39) of the decision by the EIC with respect to Motions (A)(1) and (A)(3) in Paper No. 35.



 Schleimer et al., at the request of the EIC, filed an opposition (Paper No. 42) with respect to the Dewez et al. request regarding Motion (A)(1).



 Under 37 CFR 1.640(c), a party filing a request for reconsideration of a decision on motions must 'specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision.'



 In Motion (A)(1), Dewez et al. alleged that certain claims in the Schleimer et al. application which had been designated as corresponding to the count were unpatentable. In their opposition, Schleimer et al. argued that the language in 37 CFR 1.633(a) relating to a motion for judgment 'on the ground that an opponent's claim corresponding to a count is not patentable to the opponent' requires that such a motion be restricted to the opponent's claim which corresponds exactly to the count. The EIC held that the argument of Schleimer et al. was without merit and Schleimer et al. request reconsideration of that holding.



 Under the new interference rules the Board may decide questions of patentability as well as questions of priority (35 USC 135(a)). Thus, the question of whether a matter is ancillary or not ancillary to priority does not arise under the new rules, and the decision of Moncada v. Johnson et al., 212 USPQ 824 (Comm'r. 1980) cited by Schleimer et al., which was decided under the old rules, does not apply (See 49 Fed. Reg. 48440, December 12, 1984; 1050 O.G. 409, January 29, 1985, paragraph bridging columns 1 and 2). There is nothing in 37 CFR 1.633(a) which limits a motion for judgment on the ground of unpatentability to a claim of an opponent corresponding exactly to a count. In the discussion of the new rules in the Federal Register, supra, paragraph bridging pages 48423-48424, (1050 O.G. 392-393) it is stated that 'unpatentability can be based on prior art . . . or any ground which would support a holding that claims corresponding to a count are not patentable.' (Emphasis added).



 The position of Schleimer et al. to the effect that the question of patentability as to all claims corresponding to the count except the claim corresponding exactly thereto should be left for consideration by the examiner when ex parte prosecution is resumed is contrary to the stated intent of the rules.



  *2 In the last two paragraphs on page 48416 of the Federal Register, supra, (1050 O.G. 385) it is stated:

   The object of the interference will be to resolve all controversies as to all interfering subject matter defined by one or more counts. A final decision in the interference will determine who, if anyone, is entitled to claims which correspond to a count. Any decision adverse to an applicant by the Board will constitute a final refusal by the PTO to that applicant of the claims involved. Any decision adverse to a patentee constitutes cancellation from the patent of the claims involved.

   Any decision by the Board on any issue is binding on the examiner and would govern further proceedings in the PTO.



 Thus, even if Schleimer et al. prevail on the question of priority, the Board may issue judgment against them on the question of patentability as to some of their claims corresponding to the count.



 The Schleimer et al. request has been considered but is denied with respect to making any change in the decision of the EIC.



 The Dewez et al. request for reconsideration of Motion (A)(1) regarding the patentability of Schleimer et al. claim 3 and the Schleimer et al. opposition to the request have been considered.



 In the opposition, Schleimer et al. rely mainly on the limitations in claims 1 and 2 in arguing that claim 3 is patentable over the prior art. However, claims 1 and 2 were held in the decision on motions to be unpatentable over the prior art and Schleimer et al. have not specifically requested reconsideration of that holding.



 On page 5, line 9 of the specification, Schleimer et al. state that the location of elements 7 is not critical and in the last paragraph on page 4 of Paper No. 8 of the application, Schleimer et al. state that the specific location is not important so long as the permeable elements are arranged in a direction generally along and inclined toward the axis of the flow hole . . .' Claim 3 does not require the elements to be inclined toward the axis. Accordingly, the Dewez et al. request to hold claim 3 of Schleimer et al. unpatentable is granted.



 The Dewez et al. request for reconsideration regarding the question of whether claims 9 to 15 and 17 to 23 of Dewez et al. correspond to the count has been considered but it is not seen that the EIC misapprehended or overlooked any of the points raised by Dewez et al. in reaching his decision.



 The Dewez et al. request has been considered and granted as to holding claim 3 of Schleimer et al. unpatentable, but is denied with respect to making any other change in the decision of the EIC.



 The parties may raise the matters decided by the EIC or herein at final hearing, however, matters not presented in a party's main brief may be considered abandoned. Photis v. Lunkenheimer, 225 USPQ 948 (Bd. Pat. Int. 1984).



Preliminary Statements



 The parties are required to serve copies of their previously filed preliminary statements on or before February 24, 1987 (37 CFR 1.621(b)).






  *3 No time for filing motions for additional discovery is set forth herein (37 CFR 1.635, 1.637(b), 1.687(c)). If either party believes that such motions are necessary, the party should contact the undersigned via a conference call, including opposing counsel, prior to the beginning of the junior party's testimony period.



 Testimony of the junior party to start - March 24, 1987.



 Testimony of the junior party to close - May 15, 1987.



 Request to cross-examine junior party affiants to close - May 29, 1987.



 The time for cross-examination of the junior party affiants will be set if, and when, the senior party files a request therefor.



 In the event that there is no junior party affidavit testimony or the senior party does not wish to cross-examine the junior party affiants, the time for the senior party to request a rebuttal testimony period expires - May 29, 1987.



 Since the senior party relies in its preliminary statement solely on the filing dates of its benefit application for priority, the senior party will not be provided with a period for testimony in chief unless a motion under 37 CFR 1.635 meeting the good cause requirement of 37 CFR 1.651(b)(4) is granted.



 Testimony taken by affidavit must be filed and served by the close of the relevant testimony period (37 CFR 1.672(b)).



 A certified transcript of a deposition must be filed by the time set in 37 CFR 1.678.



 The attention of the parties is directed to the following rules:

   (1) 37 CFR 1.673(a)--notice of deposition;

   (2) 37 CFR 1.673(b)--service of documents and access to things;

   (3) 37 CFR 1.673(c)--failure to comply with (1) and (2);

   (4) 37 CFR 1.673(g)--oral conference with opponent;

   (5) 37 CFR 1.673(e)--affidavit testimony;

   (6) 37 CFR 1.653(i), 1.676(d) and 1.677(b) - exhibits;

   (7) 37 CFR 1.673(h), 1.675(d), 1.676(a)-(d), 1.677(a) and  1.678 - certified deposition transcript; and

   (8) 37 CFR 1.653(c)-(i) - working record.



 It is the responsibility of the parties to instruct the reporter as to the specific requirements of the rules.



 The time for filing and serving the record (37 CFR 1.653(c)) and brief times will be set in due course.






Stanley M. Urynowicz, Jr.






James R. Boler






Ronald H. Smith





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