Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Interference No. 101,537
November 30, 1987
Donald E. Hasse
The Procter & Gamble Co.
Ivorydale Technical Ctr.
Cincinati, OH 45217
115 Avenue of the Americas
New York, NY 10036
Saul I. Serota
Wells has filed a petition to the Commissioner under 37 CFR 1.644(a)(1) (Paper No. 49), supplemented by Paper No. 50 and opposed by Verbruggen in Paper No. 60. In its decision of June 18, 1987 (Paper No. 55), adhered to on reconsideration (Paper No. 59, July 7, 1987), a panel of the Board of Patent Appeals and Interferences (Board) certified the petition [FN1] only as to question (1), i.e.:
The propriety of allowing Verbruggen to take testimony regarding the issue of Wells' support (35 USC 112, first paragraph) for his claims 11-36 corresponding to the count.
On July 8, 1986, Verbruggen filed a preliminary motion under 37 CFR 1.633(a) (Paper No. 9), asserting that Wells' claims corresponding to the count were unpatentable on several grounds, including, inter alia, a lack of support in the Wells disclosure (35 USC 112, first paragraph). After the filing of an opposition and reply, the Examiner-in-Chief rendered a decision (Paper No. 26, October 31, 1986) denying the motion and stating at page 3 that:
The burden falls upon Verbruggen to make out a prima facie case for the alleged lack of support. However, he has presented insufficient evidence, within the meaning of § 1.639(a), to make out such a case.
The Examiner-in-Chief also issued an order to show cause against Verbruggen under 37 CFR 1.640(d)(1) and (3).
In response to the order to show cause, Verbruggen filed a motion for testimony under § 1.651(c)(4) [FN2] and additional discovery (Paper No. 31, filed December 3, 1986). With respect to the 35 USC 112 question, Verbruggen stated that the testimony of Wells and others involved in preparation or prosecution of the Wells applications should be taken, and that "depending upon the testimony obtained from the above persons, Verbruggen may need to take the testimony of employees of the Procter & Gamble Company [his assignee] regarding whether the Wells specification suggests the compositions of Claims 11-36 to a person of ordinary skill in the art." Wells opposed the motion on the ground, inter alia, that Verbruggen should have sought the testimony during the motion period under § 1.639(c). [FN3]
The Examiner-in-Chief denied Verbruggen's motion for testimony (Paper Nos. 35 and 36, March 24 and 31, 1987), but in Paper No. 40 (April 22, 1987) the Board panel granted the motion to the extent of permitting the testimony of Procter & Gamble employees. With respect to Wells' assertion that Verbruggen should have sought the testimony earlier, the Board stated (pages 2-3):
*2 We do not agree with Wells that having failed in his preliminary motion to present the precise evidence now requested, Verbruggen is somehow estopped from now presenting it. The requirements for an appropriate preliminary motion are set forth at 37 CFR 1.637(a). Wells does not argue that the rule was not complied with. Rather he argues, "... Verbruggen's failure to comply with the rules, which is the basis for his losing on the preliminary motions, is insufficient to demonstrate 'good cause' for supporting his present Request." However, Wells does not set forth which rule(s) was (were) violated by Verbruggen. No reason has been set forth for suspecting that other than good faith was employed by Verbruggen in believing originally that such evidence as now requested was not required. Of course, Wells is correct to the extent he may be arguing that Verbruggen is prohibited from raising matters not specifically raised in his preliminary motion. Cf. Payet v. Swidler, 207 USPQ 168 at 171 (Bd.Pat.Int.1980).
The decision was adhered to on reconsideration (Paper No. 43, May 5, 1987), and the instant petition followed. In the petition, Wells takes issue with the Board's approach indicated in the above-quoted portion of Paper No. 40. He argues that, in determining whether Verbruggen had complied with § 1.639(c), the Board should have applied an objective test, i.e., should have determined whether Verbruggen could reasonably have believed that testimony was not necessary to support the merits of the nonsupport issue raised in his preliminary motion. Wells asserts that the standard applied by the Board is "virtually irrebuttable" and that
... this two step procedure of presenting a motion a first time, losing for lack of evidence, and then being allowed to obtain such evidence to present the same motion a second time, is foreign to the entire purpose of the revised rules of interference practice, and especially § 1.639, which was to shorten, simplify and render less expensive final resolution of interference contests, again in response to critics of the interference practice. (Petition, pp. 16-17).
Verbruggen, in opposition to the position, notes that in his reply to Wells' opposition to Verbruggen's motion for testimony (Paper No. 33), he stated that he did not believe that additional testimony was necessary to support his preliminary motion. He asserts that he should not be prevented from now presenting evidence simply because he reasonably believed that it was unnecessary.
There does not appear to be any disagreement that noncompliance with § 1.639(c) would constitute a proper basis for denying a motion under § 1.651(c)(4). § 1.639(c) would be rendered a nullity if a party could withhold from the Examiner-in-Chief a description of testimony which the party believed necessary to support or oppose a motion under §§ 1.633 or 1.634 and then, if the motion were decided adversely to him, introduce such testimony during a testimony period set pursuant to § 1.651(c)(4). On the other hand, it should be noted that the fact that a party does not submit certain evidence in support of a preliminary motion under § 1.633 does not necessarily preclude him from presenting that evidence during a subsequent testimony period. Nabial v. May, 2 USPQ2d 1452 (BPAI 1986).
*3 Wells seems to construe the Board's decision, Paper No. 40, as holding that a bare assertion that testimony was not believed necessary would be sufficient in every case to comply with § 1.639(c). However, the decision does not appear to be so far reaching. As stated in the above quotation from Paper No. 40, the Board found no reason to suspect that Verbruggen's belief that testimony was unnecessary was not in good faith. The Board did not indicate that it would have granted Verbruggen's motion if the situation had been such that the necessity for testimony was so apparent that Verbruggen's belief could not have been in good faith.
As a practical matter, it does not appear that the "objective test" proposed by Wells and the test applied by the Board are substantially different. In finding no reason to suspect that Verbruggen's belief was not in good faith, the Board in effect found that it was not unreasonable for Verbruggen to believe that testimony was not necessary to support his preliminary motion. Such an approach to determining whether there was compliance with § 1.639(c) is considered correct, and no manifest error or abuse of discretion is found in the conclusion reached by the Board.
The petition is denied.
FN1. § 1.644(a)(1) provides:
(a) There is no appeal to the Commissioner in an interference from a decision of an examiner-in-chief or a panel consisting of more than one examiner-in-chief. The Commissioner will not consider a petition in an interference unless:
(1) The petition is from a decision of an examiner-in-chief or a panel and the examiner-in-chief or the panel shall be of the opinion (i) that the decision involves a controlling question of procedure or an interpretation of a rule as to which there is a substantial ground for a difference of opinion and (ii) that an immediate decision on petition by the Commissioner may materially advance the ultimate termination of the interference.
FN2. § 1.651 Setting times for discovery and taking testimony, parties entitled to take testimony.
(c) A party is not entitled to take testimony to present a case-in-chief unless:
(4) A motion (§ 1.635) is filed showing good cause why a testimony period should be set.
FN3. § 1.639 Evidence in support of motion, opposition, or reply.
(c) When a party believes that testimony is necessary to support or oppose a preliminary motion under § 1.633 or a motion to correct inventorship under § 1.634, the party shall describe the nature of the testimony needed. If the examiner-in-chief finds that testimony is needed to decide the motion, the examiner-in-chief may grant appropriate interlocutory relief and enter an order authorizing the taking of testimony and deferring a decision on the motion to final hearing.