Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 BAYLES ET AL.
ELBE ET AL.
Patent Interference No. 101,956
April 12, 1990
Antifungal Azole Compounds
Application of Richard W. Bayles, Francis T. Boyle, Michael B. Gravestock and James M. Wardleworth, Serial No. 768,838, filed August 23, 1985. Accorded benefit of United Kingdom Serial Nos. 8,422,414, filed September 5, 1984, 8,422,415, filed September 5, 1984 and 8,508,111, filed March 28, 1985.
Application of Hans-Ludwig Elbe, Erik Regel, Karl H. Buchel, Paul Reinecke, Wilhelm Brandes and Gerd Hanssler, Serial No. 864,172, filed May 16, 1986. Accorded benefit of U.S. Serial Nos. 624,883, filed June 27, 1984 and German P 3325313.7, filed July 13, 1983.
Application of Kenneth Richardson, Serial No. 584,216, filed February 27, 1984. Accorded benefit of United Kingdom Serial Nos. 8,307,232, March 16, 1983 and 8,331,475, filed November 25, 1983.
Paul N. Kokulis, Allen Kirkpatrick, Lloyd J. Street, George T. Mobille, James L. Dooley, Alvin Guttag, Raymond F. Lippitt, G. Lloyd Knight, Carl G. Love, Lawrence A. Hymo, Akin T. Davis, Edgar H. Martin, William K. West, Jr., Kevin E. Joyce, Edward M. Prince, Donald B. Deaver, David W. Brinkman, George M. Sirilla, William T. Bullinger, Donald J. Bird, Larry S. Nixon, James R. Longacre, Arthur R. Crawford, W. Warren Taltavull, Michael L. Keller, Charles R. Donohoe, Sherman O. Parrett, Robert A. Vanderhye, Watson T. Scott, Peter W. Gowdey, Michael A. Lechter, Dale S. Lazar, James T. Hosmer and Glenn J. Perry for Bayles et al.
Arnold Sprung, Leonard Horn, Nathaniel D. Kramer, James F. Woods, Joseph G. Kolodny and Ira J. Schaefer for Elbe et al.
Charles J. Knuth, Albert E. Frost, Allen J. Spiegel, Peter C. Richardson, Gezina Holtrust, James H. Monroe, J. Trevor Lumb, Lawrence C. Akers, James M. McManus, Mark Dryer, Paul D. Thomas, Allen Bloom, Robert K. Blackwood, Harold W. Ordway, Lorraine M. Donaldson, Arthur G. Connolly, Nathan Bakalar, Albert J. Bower, Rudolf E. Hutz, Harrold Pezzner, John D. Fairchild, Richard M. Beck, Paul E. Crawford, Thomas M. Meshbesher, Richard T. Foster, Jeffrey F. Craft and Mary W. Bourke for Richardson
Torchin and Downey
Receipt of the following papers is acknowledged:
A. "RESPONSE TO SHOW CAUSE ORDER" filed by Elbe et al (Paper No. 37).
B. "MOTION FOR TESTIMONY C.F.R. 1.635" filed by Elbe et al (Paper No. 38). Opposed by Richardson (Paper No. 41).
The present interference involves three parties, Bayles et al, Elbe et al and Richardson with their respective applications. In the declaration notice, Richardson was made senior party, having been accorded benefit of his earlier filed foreign applications, and both Bayles et al and Elbe et al were made junior party. [FN1] The subject matter of the count not being in issue in reaching this decision, it is not set forth. Only party Elbe et al and party Bayles et al filed preliminary motions in the time set under 37 CFR § 1.636(a) [FN2]--Elbe et al a motion to substitute a proposed count for the existing count urging that "the existing count is so narrowly drawn as to embrace less than a whole invention" (Paper No. 15) and Bayles et al a motion to designate claim 11 of their application as not corresponding to the count (Paper No. 14). The Examiner-in-Chief (EIC) denied the Elbe et al motion and granted the Bayles et al motion (Paper No. 36). Thereafter the preliminary statement of each of the parties was opened, and both Bayles et al and Elbe et al were put under an order to show cause pursuant to 37 CFR § 1.640(d)(3) [FN3] because the dates asserted in their preliminary statements did not overcome the effective filing date of Richardson, the senior party (Paper No. 36, VII at page 5).
*2 Party Bayles et al failed to respond to the order to show cause in the time set for response. Accordingly judgment pursuant to 37 CFR § 1.640(e) [FN4] is now appropriate.
Elbe et al, in response to the EIC's order to show cause (Papers A. and B., supra), requested a testimony period to present evidence in support of their preliminary motion to substitute a proposed count, and a final hearing with respect to all issues decided adversely to them including the propriety of the dismissal of motions.
In response, Richardson filed an opposition together with a motion for judgment in his favor against Bayles et al and Elbe et al. Richardson noted in his motion that Bayles et al failed to respond to the show cause order. As to Elbe et al, Richardson urged that matters concerning priority have been decided by virtue of his (Richardson's) earlier filing date and that Elbe et al are not entitled to a testimony period for the purpose of presenting additional evidence to support a previously decided preliminary motion.
Elbe et al have not shown good cause why judgment should not be entered against them. [FN5] We find no explanation or reasoning in the original preliminary motion as to how Elbe et al could prevail with respect to Richardson even if the Board were to reverse the EIC's decision denying that motion to substitute a count for the existing count.
The only basis offered by Elbe et al for prevailing against Richardson is set forth for the first time in their opposition to Richardson's motion for judgment. Specifically, Elbe et al urge that if the Board agrees with them that the proposed count should be substituted for the existing count, then Elbe et al will be able to present evidence of an earlier reduction to practice than if the existing count remains. However, such argument should have been presented in the Elbe et al original motion paper. [FN6] Under well settled practice an attempt to provide a new basis as a ground for granting a previously denied motion will not be entertained. Motions should not be made piecemeal; they must be completed within the time set. Richards v. Kletzker, 1902 C.D. 62 (Comm'r 1902), 98 O.G. 1709; 37 CFR § 1.637 [FN7]; also cf. Arai v. Kojima, 206 USPQ 958 (Comm'r 1978), wherein a party was not entitled to supplement an insufficient motion once it was dismissed. Moreover, the fact that Elbe et al filed a motion to substitute does not entitle them to raise at final hearing grounds not included in the motion. It has been a long standing practice that a party whose motion was denied cannot present at final hearing reasons in favor of granting the motion if those reasons were not included in the original motion. Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 (CCPA), cert. denied, 393 U.S. 980 (1968); Koch v. Lieber, 141 F.2d 581, 61 USPQ 127 (CCPA 1944); Payet v. Swidler, 207 USPQ 168 at 171 (Bd.Pat.Int.1980); Phillips v. Matthews, 197 USPQ 776 (Bd.Pat.Int.1977); and 37 CFR § 1.655. Indeed, to the extent that Elbe et al raise new grounds in their opposition to Richardson's motion for judgment (i.e., priority proofs not possible with the original count), the opposition paper is but a new motion and the new motion is dismissed as belated. [FN8]
*3 Additionally, Elbe et al, in their opposition to the Richardson motion for judgment, attack Richardson's preliminary statement. Such attack is inappropriate and irrelevant to the application of the provisions of 37 CFR § 1.640(d)(3). [FN9] No motion was filed to deny Richardson the benefit accorded him in the declaration papers. Hence, there was never any dispute that Richardson was entitled to the date of his earlier filed applications and his senior party status irrespective of his filing of a preliminary statement. Even if the preliminary statement were defective, Richardson, as senior party, may rest on his effective filing date. Note that 37 CFR § 1.621 is permissive, "... each party may file a preliminary statement ...".
In a like manner, the request of Elbe et al for a testimony period is denied for essentially the same reasons advanced in the denial of the request for final hearing, supra. Elbe et al have provided no reason why the grant of a testimony period would serve a useful purpose. The rules provide that all evidence in support of a motion must be filed and served with the motion. [FN10] See 37 CFR § 1.639. Elbe et al have not shown any reason why they did not timely proceed under 37 CFR § 1.639 during the motion period. See 37 CFR § 1.645(b) and Orikasa v. Oonishi, 10 USPQ2d 1996, at 2000, footnote 12 (Comm'r 1989).
Indeed, the actions of Elbe et al are contrary to both public interest in avoiding piecemeal prosecution of interferences, Pritchard v. Loughlin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966), and to the spirit and scope of the new rules which have been implemented to provide "the just, speedy and inexpensive determination of every interference." 37 CFR § 1.601 and § 1.640(b); and Notice of FINAL RULES, 49 F.R. 48416, 48419 (December 12, 1984), 1050 O.G. 385, 388 (January 29, 1985).
The Elbe et al request for final hearing did not identify with any reasonable specificity the motions that were dismissed or decided adversely which Elbe et al wished to have reviewed by the Board. However, inasmuch as the Elbe et al opposition to the Richardson motion for judgment did identify a new ground in support of granting the Elbe et al preliminary motion to substitute, the foregoing discussion is limited to the new ground as it relates to that motion.
In view of the above, the Richardson motion for judgment is granted.
Judgment as to the subject matter of the count in issue is hereby awarded to Kenneth Richardson, the senior party. Hans-Ludwig Elbe, Erik Regel, Karl H. Buchel, Raul Reinecke, Wilhelm Brandes and Gerd Hanssler, a junior party, are not entitled to a patent containing claims 1, 3, 4, 6, 7, 9 and 10 corresponding to the count. Richard W. Bayles, Francis T. Boyle, Michael B. Gravestock and James M. Wardleworth, a junior party, are not entitled to a patent containing claim 14 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Norman G. Torchin
Mary F. Downey
FN1. 37 CFR § 1.601(m) defines "senior party" as the party with the earliest effective filing date as to all counts and "junior party" as any other party.
FN2. 37 CFR § 1.636(a) states: A preliminary motion under § 1.633(a) through (h) shall be filed within a time period set by an examiner-in-chief.
FN3. 37 CFR § 1.640(d) states in part:
(d) An examiner-in-chief may issue an order to show cause why judgment should not be entered against a party when: ...
(3) The party is a junior party whose preliminary statement fails to overcome the earlier of the filing date or effective filing date of another party.
FN4. 37 CFR § 1.640(e) states in part:
(e) When an order to show cause is issued under paragraph (d) of this section, the Board shall enter a judgment in accordance with the order unless within 20 days after the date of the order, the party against whom the order issued files a paper which shows good cause why judgment should not be entered in accordance with the order....
FN5. 37 CFR § 1.640(e) states in part:
FN... If the party against whom the order was issued fails to show good cause, the Board shall enter judgment against the party.
FN6. A party may exercise his right to move to substitute a count on the ground that his best proofs lie outside the present count. De Benneville v. Anderson, 212 F.2d 612, 101 USPQ 403 (CCPA 1954); Nelson v. Drabek, 212 USPQ 98 (Comm'r.1979); Wheelock v. Wolinski, 175 USPQ 216 (Comm'r.1963); Kondo v. Martel, 220 USPQ 47 (Bd.Pat.Int.1983).
FN7. 37 CFR § 1.637 states in part:
(a) Every motion shall include (1) a statement of the precise relief requested, (2) a statement of the material facts in support of the motion, and (3) a full statement of the reasons why the relief requested should be granted ... (emphasis added)
FN8. Issues raised in dismissed motions are not entitled to review on their merits at final hearing. See inter alia, 37 CFR § 1.655; Land v. Dreyer, 155 F.2d 383, 69 USPQ 602 (CCPA 1946); and most recently, Jacobs v. Moriarity, 6 USPQ2d 1799 (BPAI 1988).
FN9. See Footnote 3.
FN10. Elbe et al inappropriately filed two "letters" accompanied by declarations after the time for filing of the preliminary statements and preliminary motions had expired. These papers together with their attachments were returned to Elbe et al pursuant to the provisions of 37 CFR § 1.618(a).