Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
CARUTHERS ET AL.
Patent Interference No. 101,724
June 11, 1991
Final Hearing May 30, 1991
Solid-Phase Synthesis of Polynucleotides
Patent granted to Keiichi Itakura on February 8, 1983, Patent No. 4,373,071, filed April 30, 1981, Serial No. 06/258,925.
Application of Marvin H. Caruthers and Mark D. Matteucci, filed June 18, 1984, Serial No. 06/601,813. Accorded benefit of: U.S. S.Nos. 06/247,144, filed 03/24/81, now Patent No. 4,458,066, issued 07/03/84; 126,025, filed 02/29/80.
John E. Lynch, Peter F. Felfe, Alfred H. Hemingway, Jr., Hallie R. Levie, Vincent M. Fazzari, Stephen B. Shear, Marius J. Jason, Charles A. Blank, Norman D. Hanson, Thomas A. Beck, Frederick H. Rabin, A. Kate Huffman and Karl F. Milde, Jr. for Caruthers et al. Oral argument by Frederick H. Rabin
Before R. Smith, Sofocleous and Kimlin
Ronald H. Smith
This interference involves a patent of Itakura, U.S. Patent No. 4,373,071, issued February 8, 1983 and assigned to Edward S. Irons, P.C., and an application of Caruthers et al. (Caruthers), Serial No. 601,813, filed June 18, 1984 and assigned to University Patents, Inc.
The subject matter of the interference relates to a method of synthesizing polynucleotides. Count 1 is the sole count at issue, and it reads as follows:
A method of creating polynucleotides, including the following steps:
providing a resin support,
providing an activated ester of a nucleoside, and
combining the activated ester of the nucleoside and the resin support to obtain a resin-supported nucleoside.
The claims of the parties which correspond to count 1 are:
Itakura: Claims 1-44.
Caruthers: Claims 53-56, 58, 59, 61 and 63-68.
On April 23, 1991 Itakura filed a concession of priority (Paper No. 296), which is treated as a request for adverse judgment against Itakura as to claims 1-44 which correspond to the count. 37 CFR 1.662(a). Accordingly, judgment will be entered herein against Itakura.
Both parties filed briefs, and Caruthers appeared, through counsel, at final hearing for oral argument. In view of the concession of priority by Itakura, all the issues in the interference have become moot with the exception of the Itakura's motion to dismiss for lack of subject matter jurisdiction and the patentability of Caruthers' claims 53-56, 58, 59, 61 and 63-68.
The Examiner-in-Chief's order (Paper No. 272) granted Itakura's request for final hearing on the issue of his motion to dismiss for lack of subject matter jurisdiction (Paper No. 168). In that motion Itakura contends that the interference actually involves two patents, because the involved Caruthers' application is a continuation of Serial No. 247,144, now patent No. 4,458,066. Caruthers filed a terminal disclaimer in his involved application to overcome an obviousness type double patenting rejection. Itakura urges that the interference, in fact, is or subsumes an interference between the Caruthers' patent 4,458,066 and the Itakura involved patent. Itakura urges further that since the federal courts have exclusive jurisdiction over interferences between patents pursuant to 35 USC 291, the interference should be dismissed for lack of subject matter jurisdiction.
*2 The motion is denied for the reasons substantially as set forth by Caruthers in his brief, pages 7-10. In our view the presence of the involved Caruthers' application is sufficient to confer jurisdiction in the Board of Patent Appeals and Interferences pursuant to 35 USC 135(a).
Patentability of Caruthers' Claims 53-56, 58, 59, 61 and 63-68
Itakura's motion for judgment under 37 CFR 1.633(a) (Paper No. 11) on the ground that Caruthers' claims 53-56, 58, 59, 61 and 63-68 are unpatentable under 35 USC 103 was granted by the Examiner-in-Chief in his decision on motions (Paper No. 82). Caruthers was ordered to show cause why judgment should not be entered against him in accordance with the Examiner-in-Chief's decision. In response to the order to show cause, Caruthers requested a final hearing on the issue and presented testimony on the issue in the form of an affidavit of Marvin H. Caruthers and a declaration of Stephen J. Lombardi.
In his brief at final hearing Itakura urged that Caruthers' testimony should not be admitted into evidence or considered because Itakura was not accorded the right to cross-examine the witnesses or to present rebuttal testimony. Thus, Itakura urged that Caruthers appears before the Board without any evidence to challenge the correctness of the decision of the Examiner-in-Chief, and the decision may not be reversed unless it is manifestly erroneous or an abuse of discretion, which it is not.
Caruthers urged at oral hearing that the objection by Itakura to admitting Caruthers' testimony into evidence is moot in view of the concession of priority by Itakura. In any event we agree with Caruthers that his evidence is admissible for the reasons set forth in the Caruthers' brief, i.e., Itakura waived his right to cross-examination and rebuttal by failure to comply with the Examiner-in-Chief's order that Itakura initiate a conference call in the event he desired to cross-examine or to present rebuttal evidence, and Itakura did not file a motion under 37 CFR 1.656(h) to suppress evidence, which is a requirement for a party who desires the Board to rule on admissibility of evidence. Accordingly, we have considered the evidence submitted by Caruthers on the issue of patentability of Caruthers' claims corresponding to the count.
After a careful consideration of the evidence submitted by Caruthers, we agree with Caruthers that none of his claims would have been obvious over the references cited. Accordingly, the motion for judgment on the ground that Caruthers' claims are unpatentable to Caruthers under 35 USC 103 is denied for the reasons substantially as set forth by Caruthers on pages 28-39 of his brief.
For the foregoing reasons, judgment as to the subject matter of the count is hereby awarded to Marvin H. Caruthers and Mark D. Matteucci, the senior party. Accordingly, Itakura is not entitled to his patent containing claims 1-44 corresponding to the count, and Caruthers is entitled to a patent containing claims 53-56, 58, 59, 61 and 63-68 corresponding to the count.
BOARD OF PATENT APPEALS and INTERFERENCES
Ronald H. Smith
Edward C. Kimlin