Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Interference No. 102,285
April 18, 1990
Stay-Tied Shoe Laces
Application of Sonia O. Surabian filed September 29, 1988, Serial No. 07/251,173.
Patent granted to Karen J. Brecher, Patent No. 4,780,936 issued November 1, 1988, Serial No. 07/024,317 filed March 10, 1987.
Gene W. Arant, Marvin H. Kleinberg, Marshall A. Lerner, Matthew F. Jodziewicz and Don C. Lawrence for Surabian
Before Tarring, Sofocleous and Caroff
Opinion by Sofocleous
This interference involves an application of Surabian, assigned to L.A. Gear by an unrecorded assignment and a patent of Brecher, which is unassigned according to the records of the PTO. This interference concerns an improved device for securing the bow-knots used to tie laces on footwear. The subject matter in issue is defined by count 1, which is as follows:
Footwear with a tongue and laces comprising:
(a) a shoe tongue having a front face and a rear face;
(c) a second flexible band member having first and second ends and first and second faces;
(d) securing means for securing the first end of said first flexible band member and the first end of said second flexible band member to the front face of said tongue in the vicinity of a knot tying together ends of a shoe lace;
(e) said first flexible band member having a first portion of an engaging means which extends over a region of the first face of said first band member from the second end thereof, said first face of said band member facing outwardly from the front face of the shoe tongue, and said second flexible band member having a second complementary portion of said engaging means for releasable engagement with said first portion which extends from the second end of the band member over a region of the second face thereof, which second face is facing the front face of the shoe tongue;
(f) said first and second band members being movable between an unfastened position and a fastened position;
(g) said first and second band members being adapted to extend about and cover a tied bow-knot of said laces to permit interengagement of said first and second portions of said engaging means in a fastened position.--
Surabian provoked this interference by submitting an amendment (Paper No. 5 of her involved application), copying claims from Brecher's patent. As her filing date was more than three months subsequent to that of Brecher, Surabian submitted a showing under 37 CFR 1.608(b) in an attempt to demonstrate her prima facie case for judgment so that the interference should continue. The showing submitted by Surabian was forwarded to the examiner-in-chief (EIC) to whom this interference was assigned for evaluation.
*2 The EIC considered the showing to be inadequate to establish, prima facie, an actual reduction to practice prior to Brecher's filing date. In accordance with 37 CFR 1.617(a), the EIC declared this interference and at the same time issued an Order to Show Cause against Surabian. On January 19, 1990 (Paper No. 8), Surabian filed a response to the show cause order and on March 1, 1990 (Paper No. 11) Brecher filed a reply thereto.
Preliminarily, we note that Brecher's reply argues that Surabian abandoned, suppressed or concealed the subject matter of the count because of the more than six year delay between the date of the purported actual reduction to practice on June 30, 1982 and the filing of the application on September 29, 1988. Since the EIC's show cause order does not raise this matter, we will not consider this argument. As noted by a panel of this Board in Hahn v. Wong, 13 U.S.P.Q.2d 1211, 1216 (BPAI 1989),
... § 1.617(d) limits a reply [the patentee's views] "to discussing why all the evidence presented by the applicant does not overcome the reasons given by the Examiner-in-Chief." In this context, note the Commentary, 49 F.R. 48438, 1050 O.G. 407: "[S]ummary judgment will not be based on a rationale raised by a patentee in a statement which does not correspond to the rationale used by the Examiner-in-Chief in the order to show cause."
The Surabian response does not urge that the initial evidence presented under 37 CFR 1.608(b) was sufficient to establish an actual reduction to practice prior to Brecher's filing date. We, nonetheless, have reviewed the initial evidence and agree with the EIC that the initial evidence is not sufficient prima facie to establish an actual reduction to practice prior to Brecher's filing date.
Accompanying the response is additional evidence in the form of five additional declarations--one by the inventor Surabian and the other four by corroborating witnesses. The response states that the additional evidence is adequate to establish, prima facie, an actual reduction to practice prior to Brecher's filing date. Pursuant to § 1.617(b), we cannot consider this additional evidence unless the response shows "good cause" why the additional evidence was not initially presented with the evidence filed under § 1.608(b).
In an attempt to show "good cause," the response states:
Good Cause exists why the Board should receive and consider the foregoing evidence at this time, with the exception of the Party Surabian, none of the above Declarants were previously available to make a declaration: Mr. Fuller had moved to a small town in northern California, and was only recently located; Harold Surabian and Mary DerSarkissian were out of town on business or holiday; Harold Surabian, Jr. was away at school; the exemplars of the various models of the invention constructed by the party Surabian over the years, beginning in about 1980, were stored in various locations about the County of Los Angeles, California, and had to be located, identified and photographed before they could be presented for the Board's consideration.
*3 We agree with Brecher that the response does not show "good cause" within the meaning of 37 CFR 1.617(b) as to why the additional evidence was not initially presented with the evidence filed under § 1.608(b). Cf. Hahn v. Wong, 892 F.2d 1028, 13 U.S.P.Q.2d 1311 (Fed.Cir.1990).
As noted by Brecher, "Surabian knew of Brecher's patent shortly after the April 4, 1989 Office Action" and had at least five months to respond to the action and prepare her § 1.608(b) declarations. With respect to the newly presented declaration of Surabian, the response does not urge any reason why this declaration was not initially presented. With respect to the remaining declarants, the response merely states that they were not previously available; however, insufficient facts were submitted to substantiate this unavailability. With respect to Fuller, the response does not state what efforts were made to locate him during the aforesaid five month period. With respect to Harold Surabian, Harold Surabian Jr. and DerSarkissian, the response states that these declarants are, respectively, Surabian's husband, son and sister and that the declarants were "out of town" or "away at school." We agree with Brecher that it seems incredible that Surabian could not have located these declarants in the five month period prior to the submission of the original declarations and have them present the declarations now being submitted. The response does not explain where these declarants were, how long they were gone and what attempts were made to locate any of them prior to the submission of the original showing. Indeed, if Surabian believed at the time of the submission of the original evidence under 37 CFR 1.608(b) that the declarations now presented from these declarants were necessary, she could have filed an affidavit based on information and belief. 37 CFR 1.608(b). Cf. Golota v. Strom, 489 F.2d 1287, 180 USPQ 396, 400 (CCPA 1974). Of course, Surabian would have had to show why any declarant was unavailable.
For the foregoing reasons, we consider that Surabian has not shown "good cause" within the meaning of 37 CFR 1.617(b) as to why the additional evidence was not initially presented with the evidence under 37 CFR 1.608(b). Accordingly, the additional evidence is not entitled to any consideration.
Whereas Surabian has failed to establish her right to proceed in this interference, in accordance with 37 CFR 1.608(b) and 1.617, judgment as to the subject matter of the count in issue is hereby awarded to Karen J. Brecher, the senior party patentee. Accordingly, Sonia O. Surabian is not entitled to a patent containing claims 1 to 3 and 7 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Henry W. Tarring
Marc L. Caroff