*1 GROSE ET AL
PLANK ET AL
Patent Interference No. 101,549
March 23, 1990
Final Hearing October 26, 1989
Method For Producing Zeolites
Patent granted to Robert W. Grose and Edith M. Flanigen on March 24, 1981, Patent No. 4,257,885, filed August 6, 1979, Serial No. 063,961.
Application of Charles J. Plank, Edward J. Rosinski and Mae K. Rubin, filed November 3, 1981, Serial No. 317,735. Accorded benefit of Serial Nos. 169,005, filed July 15, 1980, now Patent No. 4,341,748, issued July 27, 1982, 023,117 filed March 23, 1979, 841,622, filed October 13, 1977, now Patent No. 4,175,114, issued November 20, 1979, 650,481 filed January 19, 1976 and 424,481 filed December 31, 1973.
James C. Arvantes, Harrie M. Humphreys, Richard G. Miller, Joseph M. Fitzpatrick, John Thomas Cella, Lawrence F. Scinto, William J. Brunet, Robert L. Baechtold, John A. O'Brien, Nels T. Lippert, John A. Krause, Henry J. Renk, Peter Saxon, Anthony M. Zupcic, Charles P. Baker, Stevan J. Bosses, Edward E. Vassallo, Ronald A. Clayton, Sidney R. Bresnick, Frederick J. Drechak, Lawrence A. Stahl, Laura A. Bauer, Gary R. Molnar, Leonard P. Diana, David M. Quinlan, Nicholas N. Kallas, William M. Warnisky, Lawrence Alaburda, Frank J. Kowalski, Lawrence S. Perry, Robert H. Fischer, and Robert L. Baechtold for Grose et al. Oral argument by Laura A. Bauer
Charles A. Huggett, Michael G. Gilman, Charles J. Speciale, Malcolm D. Keen, Edward F. Kenehan, James F. Powers, Jr., and Stephen R. Smith for Plank et al. Oral argument by Bartholomew Verdirame
Before R. Smith, Caroff and J. Smith
This interference involves a patent of Grose et al (Grose), Patent No. 4,257,885, issued March 24, 1981 and assigned to Union Carbide Corporation, and an application of Plank et al, (Plank), Serial No. 317,735, filed November 3, 1981 and assigned to Mobil Oil Corporation.
The subject matter of the interference relates to a synthetic crystalline zeolitic molecular sieve and to a process for preparing the molecular sieve composition. Counts 3 and 4, the two counts at issue, read as follows:
A synthetic crystalline zeolitic molecular sieve having a chemical composition expressed in terms of moles of oxides of
0.6-3.0 M2/nO:Al2O3: 10-350SiO2: 0-40H2O
wherein M represents a metallic cation and n represents the valence of M, and having either:
(1) an X-ray powder diffraction pattern having at least the d-spacings set forth in
11.1 +- 0.2
10.1 +- 0.2
3.85 +- 0.07
3.74 +- 0.05
3.72 +- 0.05
*2 said zeolitic molecular sieve after being calcined in air at a temperature of 600<<degrees>> C having an infra-red spectrum exhibiting substantially no absorption within the range of 3600-3100 cm-1
(2) an X-ray powder diffraction pattern having at least the d-spacings set forth in
Interplanar Spacing d(A)
11.1 +- 0.2
10.0 +- 0.2
7.4 +- 0.15
7.1 +- 0.15
6.3 +- 0.1
] +- 0.1
5.56 +- 0.1
5.01 +- 0.1
4.60 +- 0.08
4.25 +- 0.08
3.85 +- 0.07
3.71 +- 0.05
3.04 +- 0.03
2.99 +- 0.02
2.94 +- 0.02
said zeolitic molecular sieve in the uncalcined state being substantially free of organic nitrogen components.
The claims of the parties which correspond to this count are:
Grose: Claims 1-4.
Plank: Claims 3, 4, 15 and 16.
A process for preparing the composition of Count 3 which comprises forming an aqueous reaction mixture consisting essentially of inorganic reagents and having the following composition in terms of mole ratios of oxides:
SIO2/Al2O3 [FN1] 5 to 100
Na2O/SiO2 0.35 to 0.5
H2O/(Na2O+M2/nO) 20 to 600
FN1. The obvious typographical error wherein Al2O3 appeared as Al2O2 has been
and containing added seed crystals having an X-ray powder diffraction pattern having at least the d-spacings set forth in Table I or Table II of Count 3 and maintaining said reaction mixture for a period of from 6 hours to 60 days.
The claims of the parties which correspond to this count are:
Grose: Claims 7, 10 and 13.
Plank: Claims 9, 12, 14, 17 and 18.
Plank is senior party by virtue of the December 13, 1973 filing date of his application Serial No. 424,481. Plank was accorded the benefit of the December 13, 1973 filing by the primary examiner upon declaration of the interference with respect to original counts 1 and 2. During the motion period the Examiner-in-Chief accorded Plank the benefit of the December 13, 1973 filing date for counts 3 and 4 which were substituted for original counts 1 and 2. Grose opposed the Plank motion to substitute counts 3 and 4 for original counts 1 and 2, and the Plank motion for benefit as to as to counts 3 and 4.
*3 Grose filed three motions during the preliminary motion period, i.e., the motion under 37 CFR 1.633(g) to attack the benefit accorded Plank of earlier applications, the motion under 37 CFR 1.633(b) for judgment on the ground of no interference-in-fact as to count 2, and the motion under 37 CFR 1.633(a) for judgment on the ground that Plank's claims corresponding to the count are unpatentable to Plank under 35 USC 102(b). All three motions were denied (Paper No. 34). During a pre-trial conference Grose indicated that he would not raise the issue of prior invention at final hearing, but would raise the issues presented in his three preliminary motions. Grose was accorded a testimony period to present evidence directed to the criticality of the limitation directed to the IR spectrum, but Grose filed a communication (Paper No. 39) notifying the Examiner-in-Chief that he "will not take testimony in this interference."DD'
Plank presented declaration testimony "antedating a patent a patent to Chu which was cited by Grose during the motion period."D' Grose introduced certain printed publications and official records into evidence as rebuttal pursuant to 37 CFR 1.682. Both parties filed records and briefs and appeared, through counsel, at final hearing for oral argument. Plank filed with his brief a motion under 37 CFR 1.656(h) to suppress evidence presented by Grose and under 37 CFR 1.635 to strike or disregard portions of Grose's brief.
Grose indicates on page 1 of his brief that two issues are presented for our determination. The first issue presented is whether Plank was properly accorded benefit of the filing date of its earlier applications. The second issue presented is whether the Examiner-in-Chief improperly granted the motion to redefine the interfering subject matter by substituting counts 3 and 4 for original counts 1 and 2. As noted by Plank, Grose has abandoned the issues presented by his motions for judgment that there is no interference-in-fact as to count 2 and that Plank's claims are unpatentable to Plank under 35 USC 102(b) by not raising them in his brief. Photis v. Lunkenheimer, 225 USPQ 948 (BPAI 1984).
Plank's Motion to Suppress Evidence
The motion submitted pursuant to 37 CFR 1.656(h) and 1.635 requests that certain evidence, i.e., items 5, 8, 9, 10, 14 and 15 of the Grose record and the Angell declaration, be suppressed and the portions of the Grose brief which refer to the noted evidence be stricken or disregarded. The motion is granted for the reasons set forth by Plank in support thereof. Accordingly, no consideration will be given herein to the noted items, nor to the portions of Grose's brief which refer to those items.
*4 As noted supra, Grose indicated at the pre-trial conference that he would raise at final hearing the issues presented in his motions, which were denied by the Examiner-in-Chief. Grose was accorded a testimony period to present evidence in support of his position the decisions denying his motions were incorrect. However, Grose presented no evidence during his testimony period; rather, Grose presented certain evidence, including the noted items, during his rebuttal testimony period. As acknowledged by Grose in his opposition to the motion, the disputed documents (items 5, 8, 9, 10, 14 and 15) "were relied upon by Grose in its preliminary motions."D' The items plainly relate to Grose's case-in-chief, not to rebuttal. We agree with Plank that it would be most unfair to permit Grose to withhold their case-in-chief evidence until the rebuttal period, thereby precluding Plank from addressing the evidence during the testimony period.
Grose contends that the documents were already a part of the evidence in this interference because they were part of the evidence relied on by Grose in its preliminary motions. We disagree. As noted by Plank, 37 CFR 1.671 is clear that publications and official records from the patent files are not in evidence unless specifically introduced during the testimony period. Cf. MPEP § 2371, page 2300-53.
Grose argues that "[t]o the extent the parties' preliminary motions and supporting documents constitute a part of the record in this proceeding, the Angell declaration is also a part of the record of this proceeding." Grose"s argument is untenable in our view. Grose did not comply with the requirements of 37 CFR 1.671(e) and therefore may not rely on the Angell declaration. [FN2] The purpose of §1.671(e), i.e., to provide notice to an opponent when an affidavit (or declaration) is relied on so that the opponent will have the opportunity to cross-examine the affiant, if desired, or to present rebuttal evidence, would be frustrated if Grose was permitted to rely on a declaration without introducing the declaration into evidence in the manner provided for by the rule. Cf. Heymes v. Takaya, 6 USPQ2d 1452 (BPA&I 1987) and MPEP §2371, supra. We agree with Grose, however, that Plank's references to the Wu and Rubin affidavits and to Grose's item 8 should be given no consideration by us since they have not been introduced into evidence.
Plank's Motion to Substitute Counts
Grose states on page 1 of his brief that one of the two issues presented for our determination is whether the Examiner-in-Chief (EIC) improperly granted Plank's motion to redefine the interfering subject matter by substituting counts 3 and 4 for counts 1 and 2. As the proponent of the contention that the motion was improperly decided by the EIC, Grose has the burden of establishing his contention with sufficient evidence. Heymes v. Takaya, supra. Grose was accorded a testimony period to present evidence in support of his position, but Grose decided that he would "not take testimony in this interference"D' (Paper No. 39)."D' We have carefully considered the position of Grose as set forth in his brief, and we find that Grose has not met his burden to establish error on the part of the EIC in his decision granting the motion to amend the counts.
*5 As noted by Grose, the original counts recited a limitation directed to the IR spectrum of the crystalline zeolite. Plank's claims in his involved application corresponding to the counts contained the limitation directed to the IR spectrum as well as a limitation that the zeolite in the uncalcined state was substantially free of organic nitrogen components. Plank proposed the substitution of counts 3 and 4 which, include the limitation directed to the zeolite being substantially free of organic nitrogen components as an alternative to the limitation directed to the IR spectrum. Plank urged that the two alternative limitations defined the same patentable invention, and the substitution of the counts would facilitate Plank's priority proof's since his earlier applications defined the zeolite product as being substantially free of organic nitrogen components and did not have ipsis verbis support for the IR spectrum limitation. [FN3]
A motion pursuant to 37 CFR 1.633 (c)(1) must satisfy the requirements of 37 CFR 1.637 (a) and (c)(1). Thus, the motion must show that claims 15-18, presented by amendment by Plank with the motion to substitute counts and which contained only the free of organic nitrogen limitation and not the IR spectrum limitation, are patentable as required by §1.637(c)(1)(ii). Further, the motion must show that the claims (15-18 to be designated as corresponding to the counts) are drawn to the same patentable invention as the counts to which they correspond. 37 CFR 1.637(c)((2)(ii). The EIC determined that Plank met the requirements of the noted sections of rule 1.637, and Grose has not persuaded us of any error in those determinations.
We find no error in the EIC's decision that the requirements of §1.637(a) were met by Plank. Plank's indication that the amendment of the counts would conform with or facilitate his best proofs is an accepted reason in interference practice for granting such a motion and is in compliance with the requirements of §1.637(a). The situation is analogous to that in Heymes v. Takaya, supra, where the Board found that Takaya complied with the requirements of 37 CFR 1.637(a) and (c)(1) and "was therefore entitled, prima facie, to the relief requested."DD'
We are also satisfied that there was no error in the determination of the EIC that Plank's claims 15-18 containing only the organic nitrogen limitation were patentable over the prior art. The decision is consistent with that of the Board of Patent Appeals and Interferences in Plank's involved case which stated that the Board found nothing in the prior art Argauer patent to support the examiner's position that Argauer disclosed zeolites which contained no organic nitrogen components prior to calcination. (Grose record, page 41; Plank record, page 89). The fact that the Board also found that the IR spectrum limitation was not disclosed by the Argauer patent does not persuade us that the EIC erred in finding Planks' claims 15-18 allowable. As noted by Plank, there is no requirement that claims contain more than one distinguishing characteristic over the prior art.
*6 Grose challenges in his brief whether Plank established in his motion to substitute counts that his claims with only the organic nitrogen limitation define the same invention as the Grose claims corresponding to the counts. Thus, Grose argues on page 21 of his brief:
It is clear that Plank failed to establish that the IR limitation is immaterial or that its claim defines the same invention Grose claims, consequently their motion to redefine the counts and substitute new claims was not properly granted.
We agree that the Plank was required to show that the claims with the organic nitrogen limitation define the same patentable invention as the claims with the IR limitation, otherwise there would be no interference-in-fact between the two sets of claims. However, we find no error in the EIC's determination that Plank established that the alternative limitations defined the same patentable invention. The correctness of the EIC's decision is evident from the fact that, as pointed out by Plank on page 28 of his brief, Grose did not raise the issue of whether Plank's claims with the organic nitrogen limitation define the same invention as Grose's claims in opposition to Plank's motion to substitute counts. Thus, Grose is not entitled to raise this issue at final hearing. 37 CFR 1.655(b). [FN4]
Grose's alternative argument that Plank has not established that "the IR limitation is immaterial"D' is unpersuasive since there in no requirement in the rules of practice that a party establish immateriality of a limitation to support a motion to substitute counts. Indeed, the language "material limitation"D' does not even appear in the rules. Nor does Plank contend that the limitation is "immaterial"D' as note Plank's brief, page 35. Grose is apparently confusing practice under the "old interference rules"D' (37 CFR 1.201 et seq) which were replaced in 1985 by rules 1.601 et seq. Old rule § 1.205(a) provided that:
[a]n interference may be declared after copying the claims excluding an immaterial limitation or variation if such immaterial limitation or variation is not clearly supported in the application or if the applicant otherwise makes a satisfactory showing in justification thereof. (Emphasis added).
The new interference rules make no reference whatsoever to the omission of "'immaterial limitation."D' Rather, under §1.607 an applicant may initiate an interference with a patent by proposing a count, presenting a claim corresponding to the proposed count, explaining why each such claim corresponds to the proposed count and applying the terms of the claim to the disclosure of the application.
Plank complied with the requirements of the rules in moving to substitute new counts and to add claims 15-18 containing the organic nitrogen limitation to his application. Grose presented no argument in opposition to the motion that claims 15-18 were not drawn to the same invention as Grose's claims containing only the IR limitation; rather, Grose urged that the IR limitation was essential to distinguish the claims over the prior art. We disagree with that argument for the reasons set forth, supra.
Plank's Entitlement to Benefit
*7 Grose urged in his main brief that one of the issues presented for our determination in this interference is whether Plank is entitled to the benefit of his earlier applications. However, it is clear for the reasons set forth in Plank's brief that Plank was properly accorded benefit of his earlier applications as a constructive reduction to practice of the inventions of counts 3 and 4. Grose does not seriously contend otherwise, but rather admits on page 1 of his reply brief that Grose has "not contended that Plank's applications lack support for the present counts."D' Rather, it is Grose's position that "the present counts are improper due to Plank's failure to establish i) they recognized they made a new zeolite form and ii) the immateriality of the IR limitation found in the original counts and Grose's claims."DD'
We have addressed the argument based on ii), supra. We find argument i) unpersuasive for the reasons set forth by Plank in his brief. The question of whether Plank recognized a new form of zeolite at the time of their earlier applications relates to the question of benefit, not to the propriety of the motion to amend the counts. The involved Plank application plainly described and recognized both the IR limitation and the organic nitrogen limitation. Moreover, we agree with Plank that he did recognize in his prior applications that he had made a new zeolite form which differed from prior zeolites in that it did not contain organic ammonium cations, thereby meeting the limitations of counts 3 and 4. Accordingly, we find no error in the decision of the EIC in granting Plank's motion for benefit.
For the foregoing reasons, judgment as to the subject matter of counts 3 and 4 is awarded to Charles J. Plank, Edward J. Rosinski and Mae K. Rubin, the senior party. Accordingly, Grose is not entitled to his patent containing claims 1-4, 7, 10 and 13 corresponding to counts 3 and 4, and Plank is entitled to a patent containing claims 3, 4, 9, 12 and 14-18 corresponding to counts 3 and 4.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ronald H. Smith
Marc L. Caroff
John D. Smith
Members, Trademark Trial and Appeal Board
FN2. 37 CFR 1.671(e) reads as follows:
A party may not rely on an affidavit filed by that party during ex parte prosecution of an application, an affidavit under §1.608, or an affidavit under §1.639(b) unless: (1) A copy of the affidavit is or has been served and (2) a written notice is filed prior to the close of the party's relevant testimony period stating that the party intends to rely on the affidavit. When proper notice is given under this paragraph, the affidavit shall be deemed filed under §1.672(b). A copy of the affidavit shall be included in the record (§1.653).
FN3. The primary examiner who initiated the interference accorded Plank the benefit of his earlier applications based on evidence of inherency as to the IR spectrum limitation.
FN4. 37 CFR 1.655(b) provides in pertinent part that a party shall not be entitled to raise for consideration at final hearing a matter which could have been raised by a motion under §§1.633 or 1.634 unless "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 the opposition."DD'