Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Patent Interference No. 102,361
September 22, 1993
Final Hearing February 10, 1993
Apparatus And Method For Manufacturing Flexible Reclosable
Application of William A. English filed 6 September 1988, Serial No. 07/241,118.
Patent granted to Steven Ausnit on 1 December 1987, Patent No. 4,709,533, filed 22 December 1986, Serial No. 06/944,980.
Before Urynowicz, Pate and Martin
This interference is directed to a method of forming a package filled with product and having a reclosable zipper fastener and a non-reclosable safety seal. Count 1, the sole count, reads as follows:
A method of forming a vertical tubular form fill reclosable package from a sheet of flexible film comprising the steps of:
continuously feeding a supply of flexible film from a supply means;
wrapping the film into tubular shape over a filling spout bringing the lateral edges of the film together in abutting face-to-face relationship to form a longitudinal seam in the tubular shape;
feeding a continuous supply of flexible fastener profile strips into said seam between said spout and said seal location; and
attaching said flexible fastener profile strips to the inner surface of the film between said seal location and said spout to provide a reopenable closure between the fin seal and the contents of the tube supplied through the filling spout.
The parties' claims which correspond to this count are Ausnit claims 1-17 and English claims 15-36 and 38-44.
The involved English application is assigned to KCL Corporation (KCL) and the involved Ausnit patent is assigned to Minigrip Corporation (Minigrip), which in 1978 was acquired by Signode Corporation (Signode), which in turn was acquired by Illinois Tool Works, Inc. (ITW). The party English took testimony of Eric Brockmyre, Robert C. Stolmeier, Paul Emerson Taylor and William A. English (the inventor). The party Ausnit took testimony of Steven Ausnit (the inventor), Paul Tilman, Donald Van Erden, William A. Steuber, Richard J. Schwarz and Ralph Risse. Both parties filed records and briefs and were represented by counsel at final hearing.
Page numbers of the English and Ausnit records are hereinafter preceded by ER and AR, respectively, and exhibits numbers by EX and AX. Line numbers, whether singular or plural, are preceded by L. With the exception of the discussion of English's motion to suppress, concerning which both parties cite the English record, reference to the testimony of the English and Ausnit witnesses will be to pages of the English and Ausnit records, respectively. [FN1]
The English brief alleges a corroborated conception no later than mid-January 1986, actual reductions to practice beginning on 21 July 1986, which is prior to Ausnit's 22 December 1986 filing date, and diligence from conception to the actual reductions to practice. Ausnit alleges a corroborated conception on or about 19 January 1984, coupled with diligence from that date to his filing date (Ausnit does not rely on an actual reduction to practice). Each party charges the other with derivation.
English's Motion to Suppress
*2 English has moved under 37 CFR 1.656(h) to suppress Ausnit Exhibits AX1, 6-12 and 23 and the testimony relative thereto.
Exhibits AX1, 6, 7 and 9 were identified during Tilman's testimony as copies of pages from his diary. ER471, L.12--ER477, L.2 (AX1); ER478, L.10-22 (AX6); ER478, L.23--ER479, L.13 (AX7); ER477, L.3--ER478, L.9 (AX9). Exhibit AX1, which bears a printed date of 19 January 1984, includes a sketch that allegedly depicts Ausnit's invention. Exhibits AX6, 7 and 9, which are dated 13 January 1986, 20 January 1986 and 15 February 1986, respectively, include handwritten notations allegedly concerning the Ausnit invention. English contends that these four exhibits are hearsay for the following reason (motion, p. 2):
Each of these exhibits constitute [sic] out of court statements, or writings, by Mr. Tilman. These diary pages were cited for the truth of the matter asserted therein--that is, as an indication that certain events or discussions concerning the alleged Ausnit invention occurred on the date printed on the diary page.
In his reply (at 1-2), English more specifically asserts that "[e]ach of the suspect exhibits bears a date which Senior Party has used in an attempt to show when particular events related to Mr. Ausnit's purported [invention] occur relative to Junior Party's date of invention and reduction to practice." In our opinion, English has not met his burden of proving that these printed dates constitute hearsay, let alone inadmissible hearsay. In the first place, we do not agree that these printed dates are implied "statements" to the effect that the matters mentioned in the exhibits were discussed with someone on or about these dates. [FN2] Second, assuming that these dates can be so construed, English has not established that the printed dates are being offered to prove the truth of these implied statements, which at a minimum requires an assertion that Ausnit is offering the printed dates instead of testimony to prove when the discussions took place. This English has not done and in fact cannot do, since Tilman's testimony establishes when and with whom he discussed the matters referred to in these exhibits. [FN3] As a result, we will not suppress AX1, 6, 7 and 9 or the testimony relative thereto. However, we note that the dates appearing in these and other exhibits will not be taken as true and must be proved by the testimony of someone other than the inventors or by other evidence independent of the inventors. Cislak v. Wagner, 215 F.2d 275, 278, 103 USPQ 39, 41 (CCPA1954) ("It is an essential requirement that evidence be offered to show that an exhibit ... was, in fact, made on the date appearing thereon."). Compare Price v. Symsek, 988 F.2d 1187, 26 USPQ2d 1031, 1037-38 (Fed.Cir.1993) (Secretary Price's testimony that she saw the drawing identified as Exhibit 13 on or around the date printed thereon is sufficient to corroborate the existence of the drawing at that time).
*3 For the same reason he offered with respect to AX1, 6, 7 and 9, English argues that AX10, 11 and 12, which Tilman identified as copies of his calendar for the months of January 1984, February 1985 and January 1986 (ER480, L.2-- ER481, L.4; ER532, L.5--ER534, L.23). This argument is unpersuasive for the same reasons as given above with respect to AX1, 6, 7 and 9.
Exhibit AX8 consists of a copy of a two-page 20 June 1986 letter and three pages of sketches that Ausnit sent to Schwartz, a patent attorney. This exhibit was introduced during direct testimony by Ausnit (AR27, L.12-18), which was submitted in the form of an affidavit by oral deposition. It is readily apparent from an inspection of this exhibit that material has been redacted from the first page of the letter. Consequently, English faxed a request to Ausnit on 28 October 1991 for an unredacted copy of this letter prior to cross-examination of Ausnit's witness, which was set to begin on 1 November 1991. Ausnit asserts, and English does not dispute, that an unredacted copy was promptly provided and that the original was made available for inspection at the cross-examination depositions. During cross-examination of Van Erden, an unredacted copy of the first page of the letter was marked for identification as Ausnit Exhibit 22 at the request of counsel for English. AR230, L.23-25. During re-direct examination of Schwarz, an unredacted copy of the entire letter and accompanying sketches was marked for identification as Ausnit Exhibit 23. AR280, L.13--AR281, L.14.
English contends that EX8 is inadmissible because, being a redacted copy of an original document, it is not a "duplicate" in the sense of Rule 1001(4) of the Federal Rules of Evidence ("a counterpart ... which accurately reproduces the original") and thus cannot be used in lieu of the original under Rule 1003 ("[a] duplicate is admissible to the same extent as the original unless (1) a genuine question is raised as to the authenticity of the original or (2) in the circumstances it would be unfair to admit the duplicate in lieu of the original"). We do not agree that a redacted copy is not a duplicate. The last sentence of the Advisory Committee Notes for Rule 1003 clearly implies that a duplicate can be in the form of a redacted copy: "Other reasons for requiring the original may be present when only a part of the original is reproduced and the remainder is needed for cross-examination or may disclose matters qualifying the part offered or otherwise useful to the opposing party." (Citations omitted.) If a redacted copy were not considered an original, it would not be addressed in connection with Rule 1003, which concerns reasons for not accepting a duplicate in lieu of the original. The requirement of Rule 1001(4) that the duplicate accurately reproduce the original thus means to accurately reproduce the unredacted parts of the original. As a result, we will not suppress exhibit AX8 or the testimony relative thereto.
*4 Finally, English seeks to suppress exhibit AX23, which is the unredacted copy of the 20 June 1986 letter and accompanying sketches, on the ground that Ausnit did not provide English with notice or a copy of this unredacted exhibit prior to the commencement of Ausnit's testimony period or prior to cross-examination of Ausnit's witnesses. English characterizes this as a violation of 37 CFR 1.673(c), which requires prior service of all documents to be relied on at a deposition, except by agreement of the parties or upon motion under 37 CFR 1.635, and that no such agreement was reached and no such motion filed. Since AX23 adds nothing to AX8 and AX22, which are not being suppressed, the motion is hereby dismissed as moot with respect to AX23.
Whereas English contends that his burden of proving priority and/or derivation is by clear and convincing evidence, Ausnit asserts that English's evidence must be measured against the "beyond a reasonable doubt" standard. Price v. Symsek, 988 F.2d 1187, 1194, 26 USPQ2d 1031, 1036 (Fed.Cir.1993), which was decided after the parties' briefs were filed, held that where the parties' applications were not copending, the junior party has the burden of proving priority and/or derivation by clear and convincing evidence, which the court described as evidence that produces in the mind of the trier of fact an abiding conviction that the truth of the factual contention is "highly probable." 988 F.2d at 1196, 26 USPQ2d at 1038; Colorado v. New Mexico, 467 U.S. 310, 316 (1984). In view of Price, Ausnit's references to the "beyond a reasonable doubt" standard will be construed as references to the "clear and convincing" standard. [FN4]
Since Ausnit is the senior party, his burden of proving his charge of derivation by English is by a preponderance of the evidence. As for priority, if English proves a date of invention prior to Ausnit's filing date, the burden shifts to Ausnit to prove an earlier date of invention by a preponderance of the evidence. Kwon v. Perkins, 6 USPQ2d 1747, 1752 (BPAI1988), aff'd, 866 F.2d 325, 12 USPQ2d 1308 (Fed.Cir.1989) (citing D'Amico v. Brown, 155 USPQ 534 (Bd.Pat.Int.1967); Fisher v. Gardiner, 215 USPQ 620 (Bd.Pat.Int.1981)).
English's Case for Conception
Conception is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986), cert. denied, 480 U.S. 947 (1987) (quoting 1 Robinson On Patents 532 (1890)). "Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his 'completed thought expressed in such clear terms as to enable those skilled in the art' to make the invention." Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985); Field v. Knowles, 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA1950). Furthermore, the inventor must show that he was in possession of every feature of the count. Coleman v. Dines, 754 F.2d at 359, 224 USPQ at 862; Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1069 (CCPA1980).
*5 By way of background, KCL is and was during the time period in question in the business of making flexible containers. In early 1985, KCL was making reclosable plastic bags using Minigrip(R) tubing purchased from Minigrip and in the form of an integrally extruded film and zipper. ER93, L.2-7; ER98, L.22-- ER99, L.21; ER110, L.16--ER111, L.6. In early 1985, as a result of concern by KCL that Minigrip was planning to stop supplying it with Minigrip(R)))) tubing, KCL introduced its own plastic bag and zipper product, known as K-Seal(R). ER92, L.22--ER95, L.4. This product comprises separately extruded bag film and flexible profile fasteners, with the profiles being heat sealed to the film in the process of forming the bag. ER93, L.7-10. An advantage of this process was that the bag film can be more easily printed on if a zipper is not attached. ER93, L.2-19. This led to the development of K-Seal(R) # 2, which permits zipper to be applied to bags as thin as 1/4 mil. EX10.
Stolmeier, then and now president of KCL, testified that in early 1985, KCL believed that K-Seal(R) had potential for use on a form, fill and seal machine, which fills bags with a product, such as food, at the same time the bags are being formed. ER99, L.10--ER100, L.13; ER101, L.1-12. This is supported by EX10, a letter from Stolmeier to Ausnit, which reads in pertinent part as follows:
K-Seal(R) # 2 also appears to have tremendous potential in the area of reclosable packages produced on form, fill, seal equipment. Earlier this week (and after a Secrecy Agreement had been signed) we met with the market leader in snack foods. They indicated strong interest and a presentation will be made to the President of Frito-Lay later this month.
However, Stolmeier testified that he does not recall that KCL at that time specifically knew how to adapt a form, fill and seal machine for this purpose. ER101, L.1-12.
English testified that he first conceived of how to use K-Seal(R) in a form, fill and seal machine during an airplane flight in the fall of 1985. ER297, L.22--ER298, L.1 and L.18-22. This testimony is uncorroborated and therefore entitled to no weight. English's testimony that he discussed the invention with Stolmeier in January 1986 (ER306, L.17-20) also lacks corroboration.
Regarding the sketch identified as EX19, which English alleges he made in January or early February 1986 and which shows a form, fill and seal apparatus including a zipper sealer and a parallel header sealer, there is no evidence of record that corroborates these dates. The fact that the sketch was made on the back of a KCL report for the quarter ending 31 December 1985 shows that the sketch was made on or after that date (ER299, L.23--ER300, L.22) but does not prove when it was made. The contention in the English brief (at 10) that English showed this sketch to Taylor on or about 18 February 1986 is not supported by a citation to English's testimony and, as explained below in the discussion of Taylor's testimony, is also uncorroborated.
*6 An 18 February 1986 memorandum (EX12) from Stolmeier to English and Ferrell and others at KCL describes matters to be addressed at a management meeting scheduled for April 24 and 25. One of the matters identified therein is "in-line K-Seal(R) on form fill seal equipment," which Stolmeier testified refers to English's proposal for a form, fill and seal machine that would incorporate a K-Seal(R) zipper into the finished bags (ER113, L.10-22), which concept Stolmeier attributes to English. ER131, L.9-21. Stolmeier believes that when he wrote this memorandum, KCL had either ordered or decided to order a Hayssen vertical form, fill and seal machine with the intention of modifying it to accommodate K-Seal(R). ER113, L.23--ER114, L.2-11. This testimony is too tentative to be considered clear and convincing. Furthermore, it is inconsistent with English's testimony that he visited Union Standard Equipment Company ("Union Standard") in New York City on 25 February 1986 in order "to examine used form fill seal equipment to see if there was a piece of equipment that would adapt to what we were working on." ER307, L.8-17; EX24, EX25A-G. During this visit, English looked at two different types of machines including a Hayssen "Ultima" and another machine by Rovema, ER308, L.12-13, which suggests to us that a decision had not yet been made to purchase the Hayssen vertical form, fill and seal machine (or even to purchase a vertical form, fill and seal machine, for that matter). Consequently, Stolmeier's testimony fails to corroborate conception by 12 February 1986, the date of the memorandum.
On 3 March 1986, English signed a KCL purchase order (EX20) for the purchase of a 35-8 Hayssen "Ultima" Form, Fill and Seal Machine from Union Standard for $29,000. The second page of this exhibit is a price quotation (undated) from Union Standard for this machine and includes a color photograph of the machine. Stolmeier testified that the decision to order this machine must have been preceded by discussions establishing the feasibility of modifying the machine to accommodate K-Seal(R), because "we wouldn't just run out and buy a piece of equipment, especially one that cost as much as that one did." ER105, L.9-- ER106, L.7. He believes that he, English and Ferrell and others must have been present during these discussions, but does not remember what was said. ER107, L.8--ER108, L.5. This testimony is obviously too speculative to corroborate conception on or before 3 March 1986, when the machine was ordered.
However, Taylor, who during the relevant time period was a senior research and development technician (ER182, L.18--ER183, L.3), specifically recalls being present at a discussion about the feasibility of buying the Hayssen machine and modifying it to accommodate a zipper. ER192, L.10--ER194, L.18. Since there is no testimony establishing when this meeting took place, we assume that it occurred on the date the machine was ordered, 3 March 1986. Taylor testified that this discussion concerned only the Hayssen machine (ER194, L.10-18), that the discussion preceded the purchase of the machine (ER194, L.21-23), that English explained how the machine could be modified to have the zipper fed in and sealed just behind the fin seal to make a reclosable bag with a safety edge (ER196, L.8--ER197, L.13), that this was the first time Taylor had heard of this idea (ER197, L.14-17) and that when English asked him whether he thought it could be done, he replied that he was sure that it could (ER197, L.18-22). This testimony, however, lacks corroborative documentation. Asked when he first saw the sketch identified as EX19, which English alleges was made in January or early February 1986, Taylor testified as follows (ER200, L.1-10):
*7 A. I saw it in Bill English's office, and I can't say when. It was a short time af--well it was a short time after we started working on it.
Q. Was it, how soon after the meeting that you talked about did you see this drawing?
A. I can't say.
Q. Could you have seen this drawing before the meeting?
A. I don't think so, because we hadn't arrived at any conclusion as to how this would be done yet.
Although Taylor's testimony lacks corroboration by EX19 or any other document, it may nevertheless be sufficient to establish conception. As explained in III Rivise and Caesar, Interference Law and Practice 2153 (1947) and the cases cited therein, the following factors are to be considered in deciding whether oral testimony alone is sufficient to corroborate an inventor's testimony or to sustain an award of priority in his favor: (1) the required burden of proof; (2) the length of time that elapsed between the occurrences and the testimony; (3) the credibility of the witnesses; (4) the manner in which they testified, including the definiteness of their testimony; [FN5] (5) whether the invention is of a simple or a complicated nature; (6) such circumstances as the conduct of the parties at the time of the alleged invention; and (7) whether adequate explanation has been given for the failure to produce tangible evidence. Since the burden is on English to prove priority by clear and convincing evidence, this testimony must be carefully scrutinized. Compare Schwartz v. Graenz, 81 F.2d 767, 776, 28 USPQ 386, 394 (CCPA1936) (although oral testimony may be sufficient to establish priority beyond a reasonable doubt, in the absence of any corroborative documentary evidence it must be carefully scrutinized, particularly where it is adduced long after the events).
We are of the opinion that Taylor's testimony is sufficient to clearly and convincingly establish conception no later than 3 March 1986, the date when the Hayssen machine was ordered. In support, we note that only a little more than five years passed between the date of the discussion in question and the date of Taylor's testimony (May 1991), that the invention is of a relatively simple character, that (as explained infra) it was Taylor who modified the machine to accommodate the K-Seal(R) zipper, that Taylor's testimony, while brief, clearly describes how the zipper was to be fed into the modified machine in relation to the fin seal, that this testimony is consistent with Stolmeier's testimony that KCL would not have ordered such an expensive machine without first establishing that it could be modified to accommodate the zipper, and that KCL in fact purchased and modified the Hayssen machine. We note, too, that Ausnit has not challenged the credibility of Taylor's testimony regarding what was said during this discussion, such as by pointing out inconsistencies in his testimony. Compare Schwartz v. Graenz, 81 F.2d at 775, 28 USPQ at 394 (cross-examination revealed that the witnesses' memories were somewhat faulty regarding certain incidents and facts which, in view of their very clear recollection of others relative to the involved invention, they might well be expected to remember).
English's Case for an Actual Reduction to Practice
*8 Since English's preliminary statement alleges a that "[t]he invention was actually reduced to practice as [sic] least as early as July 29, 1986," that is the earliest date on which English may rely for an actual reduction to practice. 37 CFR 1.629.
A memorandum (EX23) to KCL's maintenance department dated 3 March 1986 indicates that pickup and installation of the Hayssen machine in KCL's research lab were expected to be completed by 15 April 1986 and Taylor testified that he believes it was installed on or about that date (ER261, L.17--ER262, L.20). [FN6] This date is also consistent with Stolmeier's testimony that the machine was delivered one or two months after it was ordered (ER119, L.3-7) and with an 8 May 1986 letter (EX28) from Union Standard to English, which refers to "the Hayssen Ultima machine I sold you last month." This evidence is sufficient to establish that the Hayssen machine was delivered by the end of April 1986.
According to Taylor, the photograph on the second page of EX20 accurately depicts the machine as it appeared when delivered. ER201, L.13--ER202, L.6. As delivered, the machine included a fill tube around which the bag material was drawn (ER208, L.1), a vertical bar seal for sealing the vertical edges of the bag together and a horizontal bar seal plus a serrated knife cutoff for forming seals at the top and bottom edges of the bags and cutting the bag material into separate bags. ER205, L.6-18.
Taylor testified that he and English frequently conferred about how to modify the machine and that it was he (Taylor) who actually made the modifications. ER278, L.19--ER280, L.11. Because KCL had earlier determined that an impulse sealer performed better than a bar sealer in attaching string zippers to films when making bags on non-form, fill and seal equipment, it was decided to add an impulse sealer to the Hayssen machine to seal the zipper to the film. ER267, L.19--ER268, L.13. Taylor mounted the impulse sealer in parallel and in line with the existing vertical bar sealer, which was mounted on a hinge. ER204, L.15--ER206, L.1; ER268, L.14-22. This required that the hinge be redesigned to permit it to accommodate the existing vertical bar sealer and the new impulse sealer, which necessitated adding an air cylinder so that the sealing devices can be moved straight out away from the filling tube before the hinge is operated. ER209, L.4-14. He also added a zipper guide for aligning the zipper with the edges of the film (ER209, L.13--ER210, L.7), a roller guide to keep the zipper profile straight as it came off the roll (ER210, L.13-19) and another guide, called the back guide, mounted on the fill tube (ER211, L.21-- ER211, L.15). In addition, he rotated the bottom seal ninety degrees in order to avoid crushing the zipper profile (ER212, L.23--ER213, L.21). Taylor ran and debugged the machine after the above modifications were made (ER244, L.7-9), a process he thought took one or two days. ER245, L.15-17; ER248, L.6-8. As a result of this debugging process he added a draw roller to help straighten out the leading edge of the film and a tension roller to keep the film straight where the zipper met the film as it went down through the sealing section. ER244, L.7--ER245, L.9. As a result of this debugging process, Taylor thought that the machine operated "pretty decent." ER245, L.10-14. Taylor testified that the photographs identified as EX1A-H, which were taken by Mr. Beck, counsel for English (ER13, L.17--ER15, L.25), show the machine as it appeared after he had made all of the above modifications. ER216, L.19--ER218, L.13; ER234, L.12-17. According to Taylor, EX1B is a top view showing two sealing bars side by side in parallel. The bar on the left is the original vertical sealing bar that came with the machine for making the fin seal and the bar on the right is the impulse sealing bar Taylor added for sealing the zipper profile to the bag. ER225, L.3--ER226, L.8.
*9 Although English's brief alleges that Taylor began to make the above modifications immediately after the machine was delivered, this contention is not supported by the testimony of anyone other than English or by any other evidence. English identified EX21 as a pencil sketch and notations prepared by him on 29 April 1986, the date that appears in the upper right hand corner of the exhibit. ER332, L.8-19. Taylor testified that this exhibit shows a pair of sealing bars for sealing the outer edges of the film and a pair of impulse bars adjacent to the sealing bars for sealing the zipper to the film and that this arrangement was proposed for use in the Hayssen machine. ER235, L.10--ER238, L.22. When asked whether he saw this exhibit on 29 April 1986, Taylor replied, "Yeah, it would be in that time." ER238, L.19-22. However, he also explained that he did not rely on this sketch in reducing the invention to practice. ER237, L.7-8. This testimony fails to establish when Taylor saw this exhibit, let alone when he began to modify (or finished modifying) the Hayssen machine. Furthermore, his testimony that the modifications took a month or more from the time he started them (ER234, L.3-7) is too vague to prove how long the modifications took. The same is true of his testimony that when he finished working on the machine, "it was hot weather and it was in the summer," more particularly July or August (ER262, L.21--ER263, L.1), and that the debugging run came at the end of that work. ER276, L.10-21. As a result, Taylor's testimony fails to establish that these modifications were finished by about 21 July, as English contends.
After the above modifications were made, Taylor ran the machine with a roll of continuous film and a roll of continuous zipper profile (ER252, L.8-22) and a supply of resin pellets to produce thirty or forty bags containing small resin pellets, of which some bags were continuously run after the dwell had been correctly adjusted for the weight of the pellets. ER248, L.6-ER251, L.16. According to Taylor, the machine was adjusted to where it ran packages "in pretty good shape without much distortion," thereby producing "a pretty nice looking bag" having "pretty well a tight seal," although perhaps not watertight, and also having a fin seal on the outer edge. ER256, L.1-16. Taylor positively identified EX2 as one of the bags he made during this run (ER258, L.2-4).
Taylor does not recall exactly when this test run occurred, but believes it was two months or less after he started working on the machine, ER268, L.17-20. Since, as already noted, the date when modifications began has not been established, this testimony does not prove that the above test run occurred on or about 21 July. English's reliance on EX21, 22, 26, 29 and 30 as evidence of a reduction to practice on or about that date is also misplaced. Exhibit EX21 has already been discussed. Taylor identified EX22 as his undated notes regarding modifications of the Hayssen machine, but he could not recall when these notes were made other than to say it was while he was modifying the machine. ER240, L.22--ER242, L.4. English identified EX26 as a copy of his notes regarding a 29 April 1986 telephone call to John Dominguez of Formers of Houston, Inc. to obtain the prices of bag formers for forming bags having various widths (ER331, L.11--ER332, L.7) and identified EX27 as a price quotation dated 29 April 1986 from Dominguez. These exhibits corroborates English's testimony that he inquired about purchasing a six-inch flat bag former assembly to fit the Hayssen machine (ER333, L.13-22) but do not establish which modifications, if any, had already been made. English's testimony that the machine was operated successfully before or at most several days after a 21 July 1986 telephone conversation with Vic Seichter of Hayssen (ER345, L.8-14) is uncorroborated, as are English's handwritten notes concerning that conversation (EX29). Exhibit EX30, which was identified by English as handwritten notes prepared by Taylor, shows various dimensions for the Hayssen machine and is dated 18 June 1986. ER344, L.11-23. English's testimony that the machine was running on that day or a few days thereafter (ER345, L.5-12) lacks corroboration. Although Stolmeier testified that he had seen Taylor operate the modified Hayssen machine and that it had produced the bag identified as EX2, he cannot recall when this test run was made. ER119, L.22--ER121, L.8.
*10 Nevertheless, in view of Brockmyre's testimony, discussed infra, that he saw a demonstration of the machine within a few weeks of starting work with KCL in August 1986, we are persuaded that the test run described by Taylor as producing the package identified as EX2 occurred no later than mid-September 1986. For the following reasons, we are also persuaded that this test run constituted an actual reduction to practice. To establish a reduction to practice of a method count, it is first necessary to show that each step of the method was performed, Szekely v. Metcalf, 455 F.2d 1393, 1396, 173 USPQ 116, 119 (CCPA1972), which has been established. Second, it must be shown that the product produced by the method was satisfactory for its intended use, which in some cases requires testing of the product. Birmingham v. Randall, 171 F.2d 957, 958, 80 USPQ 371, 372 (CCPA1948); Nashef v. Pollock, 4 USPQ2d 1631, 1634 (BPAI1987). As explained in Gordon v. Hubbard, 347 F.2d 1001, 1006, 146 USPQ 303, 307 (CCPA1965), "In instances where the invention is sufficiently simple, mere construction or synthesis of the subject matter may be sufficient to show that it will operate satisfactorily." Thus, testing is not required where the invention is simple and the manner in which it will operate can be determined by inspection alone. Powell v. Poupitch, 167 F.2d 514, 516, 77 USPQ 379, 381 (CCPA1948); Smith v. Place, 84 F.2d 196, 201, 29 USPQ 604, 609 (CCPA1936). In our opinion, the reclosable bag embodied in EX2 falls into this class of inventions. Taylor's testimony persuades us that he inspected the bag enough to determine that the zipper profile was securely attached to the bag film. Although he did not testify that he cut the fin seal and then opened and closed the zipper or that he manipulated the zipper open and closed without cutting the fin seal, we do not believe (and Ausnit does not contend) that it was necessary to test the zipper itself, especially in view of KCL's prior success in attaching K-Seal(R) zipper profile to bag film in nonform, fill seal equipment. ER93, L.7-10.
Ausnit argues that English's testimony that KCL was still unable to produce a "saleable package" when he changed jobs in October 1986 (ER337, L.19--ER338, L.10; ER351, L.4-8) demonstrates that no actual reduction to practice took place prior to that time. [FN7] We do not agree. It is clear that by "saleable package" English means a commercially acceptable package. It is well settled that commercial perfection is not required to prove an actual reduction to practice. DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 928 F.2d 1122, 1126, 18 USPQ2d 1152, 1155 (Fed.Cir.1991).
*11 Exhibit EX6, which Brockmyre identified as a project status report he prepared on 1 January 1987, includes the notation "Go--develop to patent process ASAP." ER42, L.4--ER43, L.21. We do not agree with Ausnit that this notation proves that the method had not been reduced to practice by that date. Brockmyre explained that this notation meant that "all the work was basically done[,] that we just needed to find out[,] one, whether we could patent that particular process and what we needed to do to get it so where we could show people...."
English also relies on testimony by Brockmyre to establish a second actual reduction to practice. Brockmyre, who began work at KCL as a research and development engineer sometime in August 1986 (ER6, L.22-25), testified that during his first two weeks on the job he saw Taylor conduct a demonstration of the modified Hayssen machine. ER17, L.16-22. Since Brockmyre did not specify which date in August was his starting date, we must assume it was the last day of the month, Oka v. Youssefyeh, 849 F.2d 581, 584, 7 USPQ2d 1169, 1172 (Fed.Cir.1988), which means this demonstration is considered to have occurred no earlier than mid-September 1986. According to Brockmyre, the photographs identified as EX1A-H accurately depict the machine he saw demonstrated except that the film and the zipper guide were different. ER15, L.20--ER16, L.12; ER78, L.23--ER79, L.16. Referring to these photographs, Brockmyre explained that during this demonstration a container above a funnel fed polyethylene pellets into a fill tube (ER18, L.2-13), that a continuous sheet of plastic bag film was pulled from a spool over shoulders and around the fill tube until the two edges of the material were touching each other (ER16, L.20--ER17, L.1; ER22, L.1-4; ER25, L.8-17), that the lips of material were sealed together at their edges to form an outer seal (ER20, L.14-16; ER30, L.2--ER31, L.3), that a continuous length of zipper profile was fed from a spool to a spot between the overlapping lips of material (ER17, L.2-9; ER25, L.20-25) and that the zipper profile was sealed to the bag material (ER19, L.9-11; ER20, L.24--ER21, L.10). According to Brockmyre, this demonstration lasted between about thirty seconds and a minute and produced about eight bags hanging on a string that was not cut (ER17, L.16--ER24, L.1). [FN8] Furthermore, Brockmyre says these bags resembled the bag identified as EX2 (ER30, L.6-12). Brockmyre testified that although he did not yet have the expertise to determine how good a seal it was and does not recall opening any of the bags, he inspected the bags sufficiently to see that the zippers were attached to the bag material. ER62, L.14--ER65, L.19. For the reasons given above with respect to Taylor's first test run, we are persuaded that Brockmyre's inspection of the bags was sufficient to establish that they were satisfactory. Thus, the test run Brockmyre observed constituted a second actual reduction to practice of the subject matter of the count. Furthermore, since it has not been established how much time passed between the test run that produced EX2 and the demonstration observed by Brockmyre, we conclude that both occurred at the same time, i.e., no later than mid-September 1986.
*12 Ausnit contends that the approximately twenty-four month period that passed between English's alleged actual reductions to practice and his 6 September 1988 filing date raises a rebuttable presumption of abandonment, suppression or concealment that English has not rebutted. English counters that Ausnit is precluded from raising this issue because his 37 CFR 1.632 notice of intent to argue this issue was stricken by the EIC as belatedly filed.
The EIC's Decision Striking Ausnit's 37 CFR 1.632 Notice
The complex sequence of events leading up to the filing and striking of Ausnit's 37 CFR 1.632 notice is as follows. In interference paper No. 29, the EIC approved a stipulated revised schedule for taking testimony and filing records and briefs (paper No. 28), including the following dates:
Testimony-in-chief of junior party by deposition testimony,
including cross-examination of affiants, to close ................... May 31,
Testimony of senior party to start .................................... June 7,
Testimony of senior party by affidavit to close ...................... June 21,
Time for junior party to request cross-examination of junior
party's affiants to close .......................................... June 28,
cross-examination of affiants, to close ............................ July 12,
Times were also set for the junior party to take rebuttal evidence.
On 2 June 1991, which was after English's testimony-in-chief period had closed, Ausnit requested an extension of the time for filing his affidavits from 21 June to 28 June, which request was granted in paper No. 37. Affidavits of Tilman, Van Erden, Stauber, Schwarz and Risse were submitted by this new due date (papers Nos. 39, 40, and 42). On 1 July, English filed and served a written request for an opportunity to cross-examine all of these witnesses (paper No. 44). After the 12 July closing date for Ausnit's deposition testimony had passed without Ausnit scheduling his witnesses for depositions, English moved to sanction Ausnit by suppressing the affidavit testimony of his witnesses, which motion was granted by the EIC in paper No. 54. Because this rendered moot any rebuttal testimony by English, English's rebuttal testimony times were vacated and new due dates were set for filing and serving records and briefs. Ausnit challenged the EIC's decision in a petition to the Commissioner filed 7 August 1991 (paper No. 55). This petition was granted in a decision mailed 26 September 1991 (paper No. 58), which authorized Ausnit to notice depositions of his witnesses for the purpose of cross-examination. Accordingly, in paper No. 66 the EIC set a closing date for cross-examination of Ausnit's affiants, dates for rebuttal testimony by English, and new dates for records and briefs.
*13 On 28 August 1991, after the above petition was filed but before it was decided and nearly three months after the 31 May 1991 closing date for English's testimony-in-chief period, Ausnit filed a belated 37 CFR 1.632 notice of intent to argue abandonment, suppression or concealment (paper No. 60). To be timely, the notice should have been filed by 10 June 1991, within ten days after the closing date of English's testimony period. See 37 CFR 1.632 ("Unless authorized by an examiner-in-chief, a notice is timely when filed within ten (10) days of the close of the testimony-in-chief of the opponent."). Ausnit was not authorized by the EIC to file a belated notice, nor did Ausnit accompany the notice with a motion under 37 CFR 1.635 purporting to show "sufficient cause" for the belatedness of the notice. 37 CFR 1.645(b).
On 3 September 1991, English moved to strike the notice as untimely (paper No. 61). Ausnit opposed and alternatively moved under 37 CFR 1.617 for issuance of an order for English to show cause why judgment should not be issued against him on the basis of suppression by English. The EIC in paper No. 66 granted the motion to strike for the reason stated therein and dismissed Ausnit's 37 CFR 1.617 motion on the ground that once an interference has been declared, it never reverts to the summary judgment stage, citing Walsh v. Sakai, 167 USPQ 465 (Comm'r Pat.1970).
Ausnit next filed a petition under 37 CFR 1.644(a)(3) seeking review of the EIC's decision to strike the notice (paper No. 80). The EIC construed this petition as filed under 37 CFR 1.644(a)(1) and declined to provide the certification required of such petitions (paper No. 86). Ausnit then filed a renewed petition under 37 CFR 1.644(a)(3) (paper No. 88). The EIC (paper No. 91) forwarded both the renewed petition and the initial petition to the Commissioner, who dismissed both petitions as premature because they were filed prior to entry of judgment (paper No. 92). The Commissioner further noted that to the extent the petitions seek a waiver of the requirements of a rule, they fail to establish the existence of an extraordinary situation where justice requires relief from the provisions of the rules, citing Myers v. Feigelman, 455 F.2d 596, 601, 172 USPQ 580, 584 (CCPA1972).
In his brief at final hearing, Ausnit contends that the EIC's decision granting English motion to strike Ausnit's notice was manifestly erroneous or an abuse of discretion. As Ausnit correctly notes, the purpose of requiring a 37 CFR 1.632 notice is to make the parties and the Board aware during the interlocutory stage of the interference that abandonment, suppression or concealment may be an issue. Holub v. Robeson, 8 USPQ2d 1440, 1442 (Comm'r Pat.1988); Patent Interference Proceedings; Final Rule, 49 Fed.Reg. 48416, 48423 (Dec. 12, 1984), 1050 O.G. 385, 392 (Jan. 29, 1985), corrections printed in 50 Fed.Reg. 23122 (May 31, 1985), 1059 O.G. 27 (Oct. 22, 1985). Ausnit asserts that this purpose was served by his belated notice and that "no prejudice was suffered by Junior Party English since the testimony period of Senior Party Ausnit was subsequently reopened and the dates for filing the record and briefs were moved back approximately four and one-half months (from August 31, 1991 to January 13, 1992)." We find this argument unpersuasive. Even assuming for the sake of argument that English was not prejudiced in any way by the belatedness of the notice, the notice was properly stricken as belated because it was not filed within the time set in 37 CFR 1.632 and was not accompanied by a showing of "sufficient cause" for the belatedness, as required for every belatedly filed paper by 37 CFR 1.645(b). Showing that an opponent was not prejudiced by the late filing of a paper does not constitute "sufficient cause" for the belatedness. Nor does a lack of prejudice permit the EIC or the board to waive the express requirements of 37 CFR 1.632 or 1.645(b). These requirements can be waived only by the Commissioner "[i]n an extraordinary situation, when justice requires," 37 CFR 1.183, which the Commissioner has already determined does not exist in this case. Therefore, the EIC acted properly in granting English's motion to suppress the 37 CFR 1.632 notice.
*14 Ausnit alternatively requests that we consider the issue of abandonment, suppression and concealment pursuant to our discretionary authority under 37 CFR 1.655(c) ("To prevent manifest injustice, the Board may consider an issue even though it would not otherwise be entitled to consideration under this section."). We are not persuaded that our failure to consider this issue will result in manifest injustice. The consequences of failing to file a timely 37 CFR 1.632 notice or a belated notice accompanied by a 37 CFR 1.645(b) showing of sufficient cause, while severe, were readily foreseeable and do not, in our opinion, outweigh the strong public interest in a strict and uniform application of the interference rules. Compare Myers v. Feigelman, 455 F.2d at 601, 172 at 584 ("the [interference] rules are designed to provide an orderly procedure and the parties are entitled to rely on their being followed in the absence of such circumstances as might justify waiving them under Rule 183. To hold that they may be ignored, in the absence of such circumstances, merely because no special damage has been shown would defeat the purpose of the rules and substantially confuse interference practice").
Ausnit's Case for Conception
Tilman, who since 1984 has been the vice president in charge of research and development at Minigrip (AR110, L.6-13), testified that on 19 January 1984 Ausnit orally disclosed to him an idea for a vertical form, fill and seal machine that adds a zipper in parallel to the outer fin seal and that the invention as disclosed on that date satisfies all of the limitations of the count. AR92, L.12-AR96, L.12. According to Tilman, AX1 is a sketch he made of this idea in his diary on that date (AR93, L.101-15). English argues that this exhibit fails to show all of the limitations of the count, namely, a supply of zipper separate from the bag film and the step of sealing the zipper to the film and that it is therefore possible that the zipper shown in the exhibit is attached to the bag film prior to the time the bag film is fed to the form, fill and seal machine, as in Tilman U.S. Patent No. 4,355,494 (AX19). Although Tilman concedes that a person looking at the sketch would have difficulty in ascertaining whether or not the zipper is pre-attached (AR139, L.4-16), the case for conception is not based on AX1 standing alone. It is also based on Tilman's testimony that Ausnit explained to him that the zipper becomes attached to the bag film at the form, fill and seal machine. We note that this testimony is consistent with the fact that the Tilman patent, which issued on an application filed in July 1980, shows a film having a pre-attached zipper being fed to a form, fill and seal machine. It is therefore extremely unlikely that this is the concept that Ausnit disclosed to Tilman on 19 January 1984.
*15 For the foregoing reasons, we find that Ausnit has established a corroborated conception no later than 19 January 1984. Assuming arguendo that AX1 and Tilman's related testimony should be suppressed or that they are insufficient to establish a corroborated conception, Ausnit's sketches dated 29 January 1986 (AX4, 5) and Tilman's testimony that he saw these sketches on about that date (AR103, L.15-AR104, L.8) establish a corroborated conception no later than about that date, which is still prior to English's corroborated conception date of 3 March 1986.
English's Case For Derivation
To prove derivation, a party must show (1) prior conception of the subject matter of the count and (2) communication of the conception to the opponent. Price v. Symsek, 988 F.2d at 1190, 26 USPQ2d at 1033; Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA1974). The subject matter communicated must have been sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention, Mead v. McKirnan, 585 F.2d 504, 507, 199 USPQ 513, 515 (CCPA1978). All of the circumstances in the record must be considered in evaluating the sufficiency of the communication. Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA1974). Furthermore, the party must provide independent corroboration for his alleged conception, Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936 (CCPA1981), and for the alleged subsequent communication. Davis v. Reddy, 620 F.2d at 889, 205 USPQ at 1069; Allen v. Blaisdell, 196 F.2d 527, 93 USPQ 428 (CCPA1952). Derivation is usually difficult to establish by direct evidence; it can generally only be established from the circumstances of a case. Sands v. Bonazoli, 223 USPQ 450 (BPAI1983); Barnet v. Wied, 195 F.2d 311, 93 USPQ 161 (CCPA1952). This is consistent with the "rule of reason" regarding corroboration, which was developed over the years in order to ease the requirement of corroboration and involves an analysis and evaluation of all pertinent evidence so that a sound determination of the credibility of an inventor's story may be reached. Coleman v. Dines, 754 F.2d at 360, 224 USPQ at 862. However, the rule of reason does not dispense with the requirement for some evidence of independent corroboration. Id. Although the English brief charges derivation by Ausnit on or before 20 June 1986, his preliminary statement (¶ 10) alleges a first communication of the invention to Ausnit as early as 29 July 1986. As a result, English is limited to that date as the earliest date of communication to Ausnit. 37 CFR 1.629. In any case, the charge of derivation fails because Ausnit's corroborated conception date precedes English's corroborated conception date, whether Ausnit's date is considered to be as early as 19 January 1984 or as late as 20 June 1986, when Ausnit wrote a letter (AX8, 22 and 23) to Schwarz requesting preparation of a patent application based on attached sketches which are copies of AX3, 4 and 5. Proof of conception by the party charged with derivation prior to the alleged communication vitiates the charge of derivation. Denen v. Buss, 801 F.2d 385, 386, 231 USPQ 159, 160 (Fed.Cir.1986).
Ausnit's Case for Derivation
*16 Ausnit's charge of derivation is based on his own testimony that he disclosed the concept of "zipper into form, fill and seal equipment" to Stolmeier at a meeting on 30 May 1985 (AR34, L.9-15; AR76, L.17-AR77, L.1) and the allegation that English, who worked for Stolmeier, started working on a device of this type several months later. English does not dispute that Stolmeier and Ausnit met on that date but correctly notes that Ausnit's testimony regarding what transpired at the meeting lacks any corroboration. The fact that Ausnit's conception date is prior to the meeting and that English's conception date is subsequent to the meeting does not, in and of itself, imply derivation.
Ausnit's Case for Diligence
Ausnit, as the party that was first to conceive and last to reduce to practice (constructively), is entitled to an award of priority only if he can show diligence during the critical period running from just before English's corroborated conception date of 3 March 1986 up to Ausnit's filing date of 22 December 1986. 35 U.S.C. § 102(g).
A party alleging diligence must account for the entire critical period. Griffith v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d 1361, 1362 (Fed.Cir.1987). Diligence may be shown by evidence of activity aimed at reducing the invention to practice, either actually or constructively, and/or by legally adequate excuses for inactivity. Id.; Keizer v. Bradley, 270 F.2d 396, 400, 123 USPQ 215, 218 (CCPA1959). Generally speaking, the activity must be directed toward a reduction to practice of the subject matter defined by the count. Naber v. Cricchi, 567 F.2d 382, 196 USPQ 294 (CCPA1977), cert. denied, 439 U.S. 826, 200 USPQ 64 (1978). Efforts to actually reduce another invention to practice may excuse inactivity with respect to the invention of the count, provided an actual reduction to practice of that other invention is necessary to enable the invention of the count to be actually reduced to practice. Naber v. Cricchi, 567 F.2d at 385, 196 USPQ at 297. In any event, the evidence must specifically show the acts which occurred and the dates on which they occurred. Hunter v. Beissbarth, 230 USPQ 365, 368 (BPAI1986); Rebstock v. Flouret, 191 USPQ 342, 343-44 (Bd.Pat.Int.1975); Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA1949).
By way of background, Van Erden, who in 1985 and 1986 was the vice president in charge of corporate facilities, planning, engineering and product development at Minigrip's parent, Signode (AR183, L.11-15), testified that towards the end of the 1970's, discussions began regarding the concept of a "black box" that would allow one to put zippers onto a form, fill and seal machine (AR204, L.22-25) and that Ausnit was part of these discussions (AR214, L.19-21). In about 1979, Signode started working on developing technologies to support that kind of packaging, including "developing technologies in how you weld compatible materials together[,] what form of welding you use, what's the right heat sources [sic] that you'd want to use in machinery, where is--what are the logical configurations of that hardware" (AR205, L.2-10). In order to produce commercially acceptable packages, it was also necessary to develop spot sealing systems, guiding systems, tracing systems, welding systems and compatiblizers that make zippers weldable to some of the film structures that people want to use for zippered film packages. AR187, L.3-10.
*17 On 30 January 1986, Signode began a project to develop vertical and horizontal form, fill and seal equipment for welding zippers to compatible substrates on HFFS (horizontal form, fill and seal) and VFFS (vertical form, fill and seal) equipment. AR188, L.18-AR189, L.3; AR233, L.20-AR233, L.15; AR236, L.17-21. In April or May of 1985, Signode prepared a planning document (EX13) budgeting $35,000 for fiscal year 1986 for this project, identified therein as number 2, to "[d]evelop equipment to weld zippers to compatible substrates on HFFS and VFFS (side zipper) machines at packing machine site" (AR185, L. 1--AR186, L. 16). The VFFS part of this project included development of Ausnit's proposal to add zipper to bag film in a vertical, form, fill and seal machine. AR221, L.15-25. In 1985 and 1986, this project was merely one of seven different projects specifically addressing different kinds of form, fill and seal equipment for producing zippered packaging. AR186, L.22-AR187, L.3; AR220, L.14-AR221, L.20. Thus, not all of Signode's work on form, fill and seal machines in the time period from 1984 to 1986 was specifically directed toward Ausnit's invention. AR217, L.1-6. Although more than $203,000 was spent on all seven projects during fiscal year 1986 (AR223, L.5-25), Signode did not spend the entire $35,000 budgeted for the project No. 2, which included Ausnit invention, during that fiscal year (AR222, L.24-AR223, L.4).
We agree with English that Van Erden's testimony (which we will not review in detail) regarding activities at Signode lacks sufficient specificity as to acts and dates to prove what efforts were being made to achieve an actual reduction to practice of the subject matter of the count as opposed to the other form, fill and seal projects for making zippered packages. Moreover, the testimony fails to establish which, if any, of the developments in the so-called underlying technologies were essential to achieving a reduction to practice of the method of the count as opposed to developing a commercial embodiment. For example, Van Erden testified that one of the most serious defects in zipper packaging for some products is a seal that leaks where the zipper comes through the end of the package (AR187, L.20-22) and that one corrective technique, which took years to develop, was to spot seal the zipper prior to formation of the side seals (AR187, L.23--AR188, L.9; AR224, L.4-15). Yet he conceded that leaks are not a concern for some types of filling materials. AR210, L.14-- AR211, L.1; AR227, L.19-23. To take another example, Van Erden testified that a substantial amount of effort was also expended in developing compatiblizers, which are introduced between a polyethylene zipper and an incompatible film structure. AR189, L.14--AR190, L.2. However, the count does not expressly or implicitly require the use of a compatiblizer.
For the foregoing reasons, Ausnit has failed to prove sufficient activity toward achieving an actual reduction to practice during the critical period or an acceptable excuse for inactivity. However, about three and one-half months after the start of the critical period, efforts commenced toward achieving a constructive reduction to practice of the invention. These efforts began in response to Ausnit's 20 June 1986 letter to Schwartz (AX8, 22 and 23) requesting preparation of a patent application. Schwartz testified that he received this letter on 25 June, at which time he read it and studied the attached sketches. AR265. The next day, Schwartz wrote Ausnit to acknowledge receipt of his letter. AX18. On the same day, the case was given Case No. 861150 and was assigned to attorneys Steuber and Schwartz. AR266. Schwartz gave the disclosure to the draftsman, Risse, to prepare pencil drawings. AR266; AX14. Risse testified that he took up this case in chronological order and finished the pencil drawings on 3 September 1986. AR284; AX14. Steuber completed his initial draft application on 11 November 1986 and it was typed the next day. AR241; AX14. The application papers were mailed to Ausnit for his signature on 20 November 1986 AR242; AX14. Ausnit returned the application with minor corrections. The corrected application was mailed to Ausnit on 3 December 1986. AR242; AX16. On 9 December, Ausnit mailed the signed application to Schwartz (AX17), who received it on 15 December (AX17) and filed it in the PTO on 22 December. In our opinion, and English does not contend otherwise, this evidence establishes attorney diligence for the period beginning 20 June 1986 and ending with Ausnit's 22 December 1986 filing date. However, since Ausnit has not proved sufficient activity or an excuse for inactivity for the first three and one-half months of the critical period, he is not entitled to an award of priority.
Alleged Offer for Sale of the English Invention
*18 Ausnit charges English with placing the invention "on sale" in the sense of 35 U.S.C. § 102(b) more than one year before the 6 September 1988 filing date of the involved English application. Ausnit contends that because the facts which support this charge did not come to light until the testimony of Stolmeier was taken, it was not necessary to file a 37 CFR 1.633(a) motion for judgment on this ground in order to have this issue considered at final hearing. We do not agree. 37 CFR 1.655(b) precludes a party from raising a patentability issue at final hearing unless (1) the issue was raised in a 37 CFR 1.633 motion that was "properly filed," (2) the issue was raised in opposition to such a motion, or (3) the party shows good cause why the issue was not raised in such a motion or opposition. A 37 CFR 1.633(a) motion is "properly filed" if it is filed either during the preliminary motion period, or after expiration of the preliminary motion period provided it is accompanied by a 37 CFR 1.645(b) showing of "sufficient cause" for the belatedness. The "sufficient cause" requirement is satisfied by showing that the motion was filed as soon as the patentability issue was discovered, unless the issue could have been discovered earlier. Maier v. Hanawa, 26 USPQ2d 1606, 1610 (Comm'r Pat.1992); Magdo v. Kooi, 699 F.2d 1325, 1329-31, 216 USPQ 1033, 1037-38 (Fed.Cir.1983).
Since Ausnit has not explained why he failed to file a belated 37 CFR 1.633(a) motion raising the patentability issue in question as soon as he became aware of it, he is not entitled to have this issue considered at final hearing. Interference Practice: Matters Relating to Belated Preliminary Motions, 1144 O.G. 8 (Nov. 3, 1992). We also decline to consider this issue pursuant to our discretionary authority under 37 CFR 1.655(c), because our failure to consider the issue will not result in "manifest injustice."
Whereas Steven Ausnit was the first to conceive and the last to reduce to practice (constructively) but failed to prove diligence for the critical period beginning just before the 3 March 1986 conception date of William A. English up to Ausnit's 22 December 1986 filing date, English is entitled to judgment as to the subject matter of the count, which means he is entitled to a patent containing his claims that correspond to the count, i.e., claims 15-36 and 38- 44.
Accordingly, judgment is hereby entered against Ausnit, who is therefore not entitled to a patent containing his claims that correspond to the count, i.e., claims 1-17 of his patent No. 4,709,533.
BOARD OF PATENT APPEALS AND INTERFERENCES
Stanley M. Urynowicz, Jr
William F. Pate, III
FN1. Instead of including the testimony of only its own witnesses, each party's record contains the testimony of both parties' witnesses.
FN2. English has not identified any other "statement" in these exhibits, express or implied, that he characterizes as hearsay.
FN3. In addition to the parts of Tilman's testimony cited above, see ER514, L.6--ER517, L.10 (AX1); ER528, L.7--531, L.22 (AX6); ER523, L.22--ER525, L.22 (AX9).
FN4. Ausnit did not request leave to file a substitute brief in light of Price.
FN5. Urfer v. Kollsman, 97 F.2d 82, 84, 37 USPQ 811, 814 (CCPA1938).
FN6. Although this memorandum shows a "completed" date of 15 March 1986, there is no testimony regarding this date.
FN8. The count does not require that the bags be cut.