Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 HAHN ET AL.
Interference No. 101,987
January 17, 1989
Urynowicz, Torchin, R. Smith, Sofocleous and Caroff
Because of the significance of the issues raised in this case, as discussed below, an expanded panel has been assigned to decide the questions presented.
The subject matter in issue in this interference is defined by the following single count, which is identical to claim 1 of Wong, the senior party patentee:
A solid crosslinkable homopolymer of an olefinic benzocyclobutene monomer of the formula
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R@1 is hydrogen or CH@3, R@2 is (CH@2)@n, and n is 0 to 6.
Corresponding to the count [FN1] are claims 4, 21 and 22 of Hahn et al. (Hahn), the junior party applicants, and claims 1-30 of Wong. Hahn is assignor to The Dow Chemical Company and Wong to the Shell Oil Company.
This interference was provoked by Hahn. (See Paper No. 14 of his involved application.) As his effective filing date was more than three months subsequent to that of Wong, Hahn submitted a showing under 37 CFR 1.608(b) [FN2] in an attempt to demonstrate his prima facie case for judgment so that the interference should continue. [FN3] The showing submitted by Hahn was forwarded to the Examiner-in-Chief (EIC) to whom this interference was assigned [FN4] for evaluation.
The EIC considered the showing to be inadequate to establish the necessary prima facie case because of lack of adequate corroboration, and on August 26, 1988 (Paper No. 2), in accordance with 37 CFR 1.617(a), [FN5] declared this interference and issued an Order to Show Cause against Hahn. On October 6, 1988 (Paper No. 7) Hahn filed a RESPONSE TO THE SHOW CAUSE ORDER, [FN6] on October 27, 1988 (Paper No. 9) Wong filed a REPLY thereto [FN7], and on November 30, 1988 (Paper No. 11) Hahn filed a COUNTERREPLY. [FN8] (See the EIC's Order of October 12, 1988 (Paper No. 8) authorizing the reply and counterreply.) It is Hahn's positions that the original showing was adequate, but if not, certain additional evidence submitted by him with his response rectifies any problem the EIC may have had with the original showing.
We hold (1) that the original showing is inadequate to allow Hahn to proceed because of lack of adequate corroboration; (2) that the additional evidence presented with the reply is not to be considered by us because Hahn has not shown the necessary "good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b)" required by 37 CFR 1.617(b) (see n. 6); and (3) that we do not consider an issue raised by Wong in his reply.
(1) Hahn's Original Showing is Inadequate.
In his original showing, Hahn submitted an affidavit by coinventor Hahn in which it is asserted that certain homopolymers of vinylbenzylcyclobutene, a homopolymer of which is within the scope of the count, were prepared and crosslinked. Attached to the Hahn affidavit were Exhibits A through E, various pages purported to be from his laboratory notebook. The isolated materials were allegedly variously analyzed by infrared spectroscopy (IR), differential scanning calorimetry (DSC), gel permeation chromatography (GPC), nuclear magnetic resonance (NMR) and thermal gravimetric analysis (TGA). Various plots of these tests are included with the notebook pages.
*2 Two "corroborating" affidavits were submitted: one by David W. Hughes, a "Project Leader for [Dow] performing research on monomer and polymer synthesis"; and one by William J. Harris, "a Senior Research Chemist for [Dow] in the Polymeric Materials Laboratory of Central Research."
According to Harris, he "read page 41 of Laboratory Databook 126-C0316 ... [and] ... understood what he read." A copy of this page is attached to his affidavit as Exhibit B, which is identical to Exhibit B attached to Hahn's affidavit. According to Hughes, he "read pages 6-32 of Laboratory Databook No. 126-C0316 and pages 5-52 of Laboratory Databook No. 127-C0178 ... [and] ... understood what [he] read; After reading pages 6-32 ... [he] signed [his] name on page 32." Attached to Hughes' affidavit are Exhibits A through G. Exhibits A through E appear identical to the corresponding exhibits of the Hahn affidavit. Exhibit F is apparently the purported page 32 (the page is unnumbered) and Exhibit G is purported to be a photocopy of page 52 of Databook 127-C0178.
The EIC, correctly in our view, held:
The corroboration is not adequate as the corroborators merely establish the existence of the particular pages of the notebook. However, the mere existence of the notebook is not enough. Lacking, is "evidence of surrounding facts and circumstances independent of information received from the inventor." Reese v. Hurst [v. Wiewiorowski], 661 F.2d 1222, 211 USPQ 936 (CCPA 1981) [hereinafter, "Reese"]. The corroborators do not explain the circumstances by which they could ascertain that the work described in the notebook was actually performed by the inventor prior to Wong's effective filing date.
Hahn argues in his response that there is sufficient corroboration because Hahn, as based on his sworn testimony, established positive identity of the polymer per his plots, they having provided the "fingerprint" for, and thus "positively identify" the polymer. However, such an argument relates to an element in establishing an actual reduction to practice and does not address the "evidence of surrounding facts and circumstances independent of information received from the inventor" (emphasis added) (Reese, supra). Indeed, in his response, Hahn does not address the "corroborating" affidavits themselves and does not point to "acts and circumstances performed or observed....," as required by § 1.608(b) for corroboration. Rather, he chooses to rely on the evidence of inventive activity provided only by coinventor Hahn. As a panel of one of our predecessor boards had occasion to note:
Scientists conventionally accept each others' reports, i.e. hearsay, on faith subject to possible later disproof or modification, but the law does not. The law based on extensive experience prefers that there be corroboration under oath by a witness who has too little to gain and too much to lose by perjury. This is awkward as regards the usual research scientist of well known integrity but the law knows that if the rule of corroboration were dispensed with many less scrupulous individuals no longer hindered by the rule and with much to gain would be tempted to fabricate records. The law cannot properly accord weight to assumed integrity in place of corroboration for such would lead to chaos. Every person considers he has integrity enough and certainly more than his opponent. There has to be one rule for all and rather than do away with the rule it were better that the research scientist share his laboratory with another, a system that some companies now impose. However, the law does recognize corroboration by circumstantial evidence if present to the necessary degree and gives weight to the impression gained as a whole from a consideration of all the details.
*3 Jex v. Wiese, 124 USPQ 457, 459 (Bd.Pat.Int.1959).
Further, as correctly (and properly) noted by Wong (reply, pp. 3-4) the original affidavits of Hughes and Harris do not establish that the corroborators' "activity"--i.e., reading and understanding the notebook pages-- occurred prior to Wong's effective filing date, December 23, 1985. We further note that although Exhibits F and G attached to the Hughes affidavit do have a stamp indicating such "activity" and include a date of October 10, 1984, it is well settled in law that exhibits do not ordinarily speak for themselves. This basic concept has been incorporated into the "new" rules--37 CFR 1.671(f), as note the Commentary to the "new" rules, [FN9] 49 F.R. 48447, 1050 O.G. 416:
One comment suggested that § 1.671(f) be eliminated on the ground that a rule should not be used to train attorneys and agents. The suggestion is not being adopted. The problems addressed by § 1.671(f) is significant. By providing in the rules that documentary evidence must be explained, the PTO hopes to save both parties and the Board considerable difficulty in presenting and evaluating evidence.
See, inter alia, Cislak v. Wagner, 215 F.2d 275, 103 USPQ 39, 41 (CCPA 1954): "It is an essential requirement that evidence be offered to show that an exhibit ... was, in fact, made on the date appearing thereon." Cf. Sloan v. Peterson, 129 F.2d 330, 54 USPQ 96 (CCPA 1942).
In light of the foregoing, we cannot agree with Hahn's position in his counterreply that our position "exalts form over substance" and that such dates must, in the interest of equity, be read into the affidavit. Indeed, "we presume that great care has been exercised in [the preparation of affidavits] by counsel in close cooperation with affiant." Clayton v. Akiba, 214 USPQ 376 (Bd.Pat.Int.1982). We, therefore, do not consider it unreasonable for us to expect that such affidavits unambiguously contain the necessary details as to dates of significant events. Cf. Sloan v. Peterson, supra, 129 F.2d at 337, 54 USPQ at 309:
However, the date when that drawing was made is of vital importance, and it is strange indeed, particularly in view of the hereinbefore related facts and circumstances, that counsel for appellant, who, with meticulous care, examined appellant's witnesses as to the dates appearing on other of appellant's documentary exhibits, did not interrogate at least one of them regarding the date appearing on exhibit 15. Counsel for appellant was, of course, aware that it was essential that some evidence be submitted to establish that exhibit 15, was in fact, made on the date which it bears-- February 14, 1935. There being no such evidence, we are unable to hold that appellant is entitled to February 14, 1935, for conception of the involved invention.
*4 We are cognizant of the legal requirement that the amount and the quality of corroborative evidence required is determined by the "rule of reason" as discussed in Reese, 661 F.2d at 1230, 211 USPQ at 940. However, we fail to see where it is reasonable to conclude from the original affidavits that any independent knowledge can be imputed to the alleged corroborators. Indeed, as we have noted, Hahn does not so allege in his response.
As noted in Kistler v. Weber, 412 F.2d 280, 162 USPQ 214, 218-19 (CCPA 1969): [FN10]
We also disagree with Kistler's suggestion that Rules 204(c) and 228 place any undue burden on a junior party or are inherently in any way "contrary to the statutory rights of a first inventor." The expense involved in a protracted interference, and the special hardships workable on a patentee involved therein,9 are notorious and to minimize both, where possible, would appear to be the laudable purpose of these rules. If a junior party is in fact "a first inventor" and if he could prove that in a "full hearing on priority," we see no reason why he should be prejudiced or unduly burdened by a requirement that he prove (prior to a "full hearing") by way of affidavits and documentary evidence that he is at least prima facie entitled to an award of priority over the patentee's effective filing date. [Footnote omitted]
See also the discussion of Kistler in Golota v. Strom, 489 F.2d 1287, 180 USPQ 396, 399-400 (CCPA 1974).
For the foregoing reasons we hold that the EIC properly applied the rule and the substantive law involved.
(2) Hahn Has Not Shown "Sufficient Cause" For Submission of the Additional Evidence.
Hahn's total showing is as follows (response, pps. 6-7):
III. Showing of Good Cause for Additional Evidence Presented
The additional evidence accompanying this response was not initially presented with the evidence filed under 37 CFR § 1.608(b) because counsel for the Party Hahn did not fully appreciate the kind of corroboration required to demonstrate a prima facie case for a complete reduction to practice before the filing date of the Party Wong. Most notably, counsel did not fully appreciate the requirement for corroboration independent of information derived from the inventor.
Additionally, although counsel exercised full care and effort, counsel for the Party Hahn did not fully appreciate the significance of the reduced photocopies of plots generated from the polymer analyses shown in Exhibit A, particularly the IR spectrum, as they bear on the issue of the kind of corroboration required in this proceeding to establish a prima facie case.
We direct attention to the following from the Commentary, 49 F.R. 48423, 1050 O.G. 392:
*5 The "good cause" showing required by § 1.617(b) imposes a stricter standard than was required under the prior rules [37 CFR 1.228]..... Under the "good cause" standard, ignorance by a party or counsel of the provisions of the rules or the substantive requirements of the law would not constitute good cause.
It is clear to us that the excuse offered by Hahn falls squarely within this proscription. Certainly, a party who "did not fully appreciate the kind of corroboration required" and "did not fully appreciate the significance of the ... plots" displays the proscribed "ignorance of the ... substantive requirements of the law" for corroboration.
Even under the "old" rules the original showing offered by Hahn would be, at best, questionable. See Justus v. Brackmann, 195 USPQ 327, 331 (Bd.Pat.Int.1976) (party could not reasonably have expected that original showing was adequate). As the panel noted in a case decided under the "old" rules, Weber v. Kunz, 209 USPQ 864 (Bd.Pat.Int.1980), recon. denied, 211 USPQ 637, 638-39:
The purpose of 37 CFR 1.228 regarding the acceptance of a supplemental showing is to ensure that a party presents an original showing under 37 CFR 1.204(c) which is as complete as possible to avoid unnecessary delay.... The public interest requires the prompt resolution of interferences and not piecemeal prosecution as attempted by Weber et al. Pritchard v. Loughlin, 361 F.2d 483, 149 USPQ 841 (CCPA 1966).
Considering that under the present rules we are to apply a "stricter standard," the showing under § 1.617(b) would at least have to comply with the test of Justus v. Brackmann, supra--whether, exercising reasonable prudence, a party with an understanding of the Rules and the substantive requirements of the law could have expected the original showing to be adequate. We fail to see how, exercising ordinary prudence, Hahn could have expected the original showing to be adequate for corroboration. Indeed, as we have already twice noted, totally lacking in Hahn's response is an explanation of why he thought the "corroborating" affidavits to be adequate regarding the necessary "setting out [of] a factual description of acts and circumstances performed or observed by the affiant" (§ 1.608(b)) to establish the necessary "independent knowledge" (Reese, supra). As we have also noted, the plots do not relate, with any significant degree, to the issue of adequate corroboration absent the requisite independent knowledge.
Accordingly, we will give no consideration to the additional evidence.
(3) Wong Has Raised an Improper Issue.
In addition to arguing the points discussed above, Wong, in his reply, urges that the original evidence must fail for lack of recognition of utility on the part of Hahn. We shall not evaluate this argument as § 1.617(b) limits a reply "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."
*6 Whereas Hahn et al. have failed to establish their right to proceed in this interference, in accordance with 37 CFR 1.608(b) and 617, judgment as to the subject matter of the count in issue is hereby awarded to Pui K. Wong, the senior party patentee. Accordingly, Stephen F. Hahn and Robert A. Kirchhoff are not entitled to a patent containing claims 4, 21 and 22 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Ian A. Calvert
Norman G. Torchin
Ronald H. Smith
Marc L. Caroff
FN1. 37 CFR 1.601(f) provides:
A "count" defines the interfering subject matter between (1) two or more applications or (2) one or more applications and one or more patents. When there is more than one count, each count shall define a separate patentable invention. Any claim of an application or patent which corresponds to a count is a claim involved in the interference within the meaning of 35 U.S.C. 135(a). A claim of a patent or application which is identical to a count is said to "correspond exactly" to the count. A claim of a patent or application which is not identical to a count, but which defines the same patentable invention as the count, is said to "correspond substantially" to the count. When a count is broader in scope than all claims which correspond to the count, the count is a "phantom count." A phantom count is not patentable to any party.
FN2. 37 CFR 1.608(b) provides, in part:
When the earlier of the filing date or the effective filing date of an application is more than three months after the earlier of the filing date or the effective filing date under 35 U.S.C. 120 of a patent, the applicant, before an interference will be declared, shall file (1) evidence which may consist of patents or printed publications, other documents, and one or more affidavits which demonstrate that applicant is prima facie entitled to judgment relative to the patentee and (2) an explanation stating with particularity the basis upon which the applicant is prima facie entitled to the judgment. Where the basis upon which an applicant is entitled to judgment relative to a patentee is priority of invention, the evidence shall include affidavits by the applicant, if possible, and one or more corroborating witnesses, supported by documentary evidence, if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle the applicant to judgment on priority with respect to the earlier of the filing date or effective filing date of the patent.
FN3. The practice followed is set forth at MPEP 2308.02. Cf. Calvert, An Overview of Interference Practice, 62 JPOS 290 (1980) and n. 10, infra.
FN4. See 37 CFR 1.610(a).
FN5. 37 CFR 1.617(a) provides:
An examiner-in-chief shall review any evidence filed by an applicant under § 1.608(b) to determine if the applicant is prima facie entitled to a judgment relative to the patentee. If the examiner-in-chief determines that the evidence shows the applicant is prima facie entitled to a judgment relative to the patentee, the interference shall proceed in the normal manner under the regulations of this part. If in the opinion of the examiner-in-chief the evidence fails to show that the applicant is prima facie entitled to a judgment relative to the patentee, the examiner-in-chief shall, concurrently with the notice declaring the interference, enter an order stating the reasons for the opinion and directing the applicant, within a time set in the order, to show cause why summary judgment should not be entered against the applicant.
FN6. 37 CFR 1.617(b) provides:
The applicant may file a response to the order and state any reasons why summary judgment should not be entered. Any request by the applicant for a hearing before the Board shall be made in the response. Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b). At the time an applicant files a response, the applicant shall serve on each opponent a copy of any evidence filed under § 1.608(b) and this paragraph.
FN7. 37 CFR 1.617(d).
FN8. 37 CFR 1.617(e).
FN9. Notice of Rulemaking, Patent Interference Proceedings, 49 F.R. 48416 (Dec. 12, 1984), 1050 O.G. 385 (Jan. 29, 1985), (hereinafter, "the Commentary").
FN10. 37 CFR 1.204(c) ("Rule 204(c)") and 37 CFR 1.228 ("Rule 228"), discussed in the decision, were the predecessor rules to 37 CFR 1.608(b) and 1.617.
*7 In our view, Hahn et al. have shown "good cause" within the meaning of 37 CFR 1.617(b) why the additional evidence was not initially presented with the evidence filed under § 1.608(b). Having reviewed the original evidence in light of the additional evidence, we necessarily conclude that this interference should proceed in the normal manner.
The sufficiency of a showing as to why any additional evidence was not initially presented must be evaluated on a case by case basis. Ing v. Chiou, 200 USPQ 558 (Comm'r.Pats.1978). Only three reported cases concern the practice under 37 CFR 1.617(b), which reads, in part, as follows:
Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b)."
In Rhodes v. Goldenberg, 230 USPQ 355 (BPAI 1985), Rhodes et al. were placed under a show cause order and filed a response thereto accompanied by two further declarations with exhibits. The response did not set forth any reasons why the additional evidence was not and could not have been earlier presented, nor did the response deny that the original evidence was inadequate for the reasons set forth by the Examiner-in-Chief in his show cause order. Under those circumstances, the panel of the Board did not consider the additional evidence.
In Griffith v. Kanamaru, 231 USPQ 892 (BPAI 1986), Griffith was placed under a show cause order because his original evidence under 37 CFR 1.608(b) was found insufficient to support "the requisite period of reasonable diligence." Griffith filed a response to the order together with additional evidence. A panel of this Board accepted Griffith's showing of good cause as to why the additional evidence was not earlier presented. The decision, however, does not set forth the nature of the showing made by Griffith.
In Holmwood v. Cherpeck, 2 USPQ2d 1942 (BPAI 1986), Holmwood was placed under a show cause order because his original evidence under 37 CFR 1.608(b) did not explain the results of the testing of the compounds falling within the scope of the count so that it could be reasonably concluded that the compounds were useful as fungicides. Assuming that the original evidence was sufficient to establish that the compounds were successfully tested as fungicides to constitute a reduction to practice, the order stated that the 33 month hiatus in time from the date of reduction to practice to the filing date of Holmwood's application was sufficient to raise the inference that Holmwood had suppressed or concealed the invention and the showing did not contain any evidence to rebut the inference. Although the Board held that Holmwood's excuse based on a press of time in presenting the original evidence under 37 CFR 1.608(b) did not constitute "good cause," the additional evidence would be considered because only a "minimal showing" was necessary to permit the consideration of additional evidence submitted to overcome the inference of suppression.
*8 The foregoing cases provide insufficient guidance for determining what constitutes "good cause," under § 1.617(b) where, as here, a party submits additional evidence while also contending that his original evidence was not insufficient to establish a prima facie case. Nor does the Commentary, supra. We read the Commentary to mean that the Office will hereafter impose a "stricter standard" by no longer accepting as an excuse, "ignorance by a party or counsel of ... the substantive requirements of the law," a position with which we are in agreement.
Here, Hahn et al. urge (1) that the original evidence provides sufficient evidence of facts independent of the inventor to establish a prima facie case of reduction to practice and (2) that if it does not, the additional evidence should be considered because their counsel ...
"did not fully appreciate the kind of corroboration required to demonstrate a prima facie case for a complete reduction to practice before the filing date of the party Wong."
As we noted above, reason (2) does not constitute a "good cause." Adverting to reason (1), this matter was addressed in Justus v. Brackmann, 195 USPQ 327 (Bd.Pat.Int.1976), in the context of 37 CFR 1.228, the predecessor of § 1.617. § 1.228 provided that additional evidence would not be considered unless "accompanied by a showing in excuse of [its] ... omission from the original showing." The panel in Justus articulated a reasonableness standard, which, in our view, constitutes the test by which to judge Hahn et al.'s purported showing of good cause.
If Hahn et al.'s position that their original evidence was sufficient is reasonable, then Hahn et al. have shown "good cause." Could Hahn et al. have reasonably expected that their original showing would have been considered sufficient by the Office to establish a prima facie case?
§ 1.608(b) specifically indicates that the burden on the applicant is only to establish a prima facie case. Cf. Schwab v. Pittman, 451 F.2d 637, 172 USPQ 69 (CCPA 1971). This means that the applicant must prove at least so much of his case as would entitle him to an award of priority if the senior party were to rely only on his filing date and were not to rebut any of the junior party's case. Kistler v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA 1969).
The purpose of the requirement that the testimony of an inventor concerning a reduction to practice of an invention be corroborated by independent evidence is to prevent fraud. Berry v. Webb, 412 F.2d 261, 162 USPQ 170 (CCPA 1969). The goal of corroboration is simply to establish that the inventor actually produced the product and knew that it would work, by proof that could not have been fabricated or falsified. All the evidence must be considered in determining whether or not the inventor has met this requirement. Gianladis v. Kass, 324 F.2d 322, 139 USPQ 300 (CCPA 1963). The realities of technical operations in modern day research laboratories must be recognized and the "rule of reason" approach must be applied in determining the type and amount of evidence necessary for corroboration. Breuer v. DeMarinis, 558 F.2d 22, 194 USPQ 308 (CCPA 1977); Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980). An inventor's testimony might be corroborated by facts and circumstances other than by an independent witness. Berges v. Gottstein, supra; Thurston v. Wulff, 164 F.2d 612, 76 USPQ 121 (CCPA 1947). Each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive. Berges v. Gottstein, supra.
*9 Hahn et al.'s original evidence under 37 CFR 1.608(b) contains three affidavits--one by Hahn, the co-inventor, and the other two by Harris and Hughes, corroborating witnesses.
Hahn avers that he prepared certain polymers and recorded the results on pages 28 to 31 and 41 of his Laboratory Databook No. 126-C0316 and on pages 17 to 19, 27 to 30 and 32 of his Laboratory Databook No. 127-C0178, which are attached as Exhibits A through E. Attached to these exhibits are copies of the analyses of the various products by infrared spectroscopy (IR), differential scanning calorimetry (DSC), gel permeation chromatography (GPC), nuclear magnetic resonance (NMR) and thermal gravimetric analysis (TGA).
Hughes, one of the corroborating witnesses, avers that he has a M.A. in chemistry, that he read pages 6 to 32 of Laboratory Databook No. 126-C0316 and pages 5 to 52 of Laboratory Databook No. 127-C0178, that he "understood" what he read and that after reading the pages he signed his name to pages 32 and 52 of Hahn's laboratory databooks (Exhibits F and G). Hughes avers that at the time he read these pages he was a "Project Leader for the Dow Chemical Company performing research on monomer and polymer synthesis." Exhibit G contains a copy of an IR, some handwriting and the following block of printed and hand written matter:
I have read the entries on pages 6 to 32 inc., of this notebook. I understand the subject matter with which the entries on said pages are concerned. There are no ruled portions of said pages which are not filled or cancelled except page ---. The entries on said pages are in the handwriting of Stephen F. Hahn
Signature ?? Date 10 OCT 1984
We disagree with the majority that ...
"totally lacking in Hahn's response is an explanation of why he thought the 'corroborating' affidavits to be adequate regarding the necessary 'setting out [of] a factual description of acts and circumstances performed or observed by the affiant' (§ 1.608(b)) to establish the necessary 'independent knowledge' (Reese, supra)."
In their response to the show cause order, Hahn et al. urge that their original evidence contained sufficient evidence of surrounding facts and circumstances independent of information received from the inventor and call our attention to Exhibit A, which "contains reduced photocopies of various plots characterizing the homopolymer Hahn made." It is Hahn et al.'s position that ...
"Hahn could not have obtained these plots unless he had prepared the homopolymer and had run the analyses described above"
and that "it is well established that an IR spectrum for a particular compound is unique."
In our view, Hahn et al. could have reasonably expected that their original evidence under 37 CFR 1.608(b) would not have been considered insufficient to establish a prima facie case. It is well settled that an infrared spectrum, in and of itself, constitutes a distinctive fingerprint for chemical compounds. Berges v. Gottstein, supra; Breuer v. DeMarinis, supra. Indeed, such a spectrum is virtually impossible to produce without the product itself. In this case, Hahn et al. are not only relying upon one IR spectrum but also are relying upon various other analyses, which, in our view, show that Hahn et al. were in possession of the polymer.
*10 In addition, Hahn's laboratory databook was witnessed by Hughes, a witness who avers that he read and understood what he read. Contrary to the majority view, we infer from Hughes' affidavit and Exhibit G attached thereto that such witnessing occurred on the date the laboratory databook was signed. It would be unreasonable to infer otherwise, i.e., that Hughes signed and read the notebook on a date other than the one written in on the block next to his signature or that some other person wrote in the date.
The majority make much ado about the fact that "exhibits do not ordinarily speak for themselves," an afterthought in the context of this case since the show cause order (Paper No. 2) does not indicate this as being one of the "reasons for the opinion" why the evidence fails to show that the applicants are prima facie entitled to a judgment relative to a patentee. See 37 CFR 1.617(a). For the majority now to state a new reason [FN1] why the original evidence is inadequate is manifestly unfair where Hahn et al. are not given any opportunity to respond. The majority are not entitled to resort back to the § 1.608(b) stage of this proceeding. As a party to an interference is required under § 1.637(a)(3) to set forth a "full statement of the reasons" in support of any motion he should file, we perceive of no reason why this should not also apply to a show cause order such as here.
We agree with the proposition that "exhibits do not ordinarily speak for themselves." Indeed, such exhibits are usually, as here, pages of laboratory notebooks. Normally, such pages contain handwritten entries of data and other notations which can be cryptic in nature, thus requiring the Board to decipher them, a task which might lead to error in interpretations. Amoss v. Vale, 195 USPQ 452 (Bd.Pat.Int.1977). This, however, is not the ordinary situation. Here, Hughes' affidavit refers to Exhibit G which contains the block, supra, which is clear on its face and does not require any deciphering. As we read the block in light of Hughes' affidavit, it is reasonable to infer under the rule of reason that the date written in the block (October 10, 1984) is the same date that Hughes had signed his name after reading the notebook pages.
We do not consider that the case of Cislak v. Wagner, relied upon the majority, is controlling in this situation. Cislak concerns a party's testimony in support of his case for priority at final hearing whereas here we are concerned with a party's showing under 37 CFR 1.608(b), which need only prove at least so much of his case as would entitle him to an award of priority if the senior party were to rely only on his filing date and were not to rebut any of the junior party's case. In Cislak, Cislak testified that a Dr. Whitmore, a deceased colleague, had seen and had initialed Exhibit 2 on September 2, 1941. No other witness was called to authenticate Whitmore's initials or to testify when the date was entered.
*11 We note that Hahn et al. are employed by The Dow Chemical Company, a major chemical company, that Hahn et al. had in their possession laboratory databooks, which by their nature are bound notebooks containing consecutively numbered pages, that the notebook pages contain copies of various instrumental analyses and that the pages were signed by the co-inventor Hahn and were witnessed by persons other than the inventors.
As the court stated in Grasselli v. Dewing, 534 F.2d 306, 189 USPQ 637, 641 (CCPA 1976),
The dated signature, on a notebook page, of a witness sufficiently familiar with the particular field of technology to understand what is described on that page is evidence, under a rule of reason, upon which one may find corroboration, especially where, as here, that admittedly authentic page was kept in the ordinary course of an organized program of research conducted over an extended period of time.
As stated in Baudry v. Donohue, 223 USPQ 823, 826, 827 (Bd.Pat.Int.1984),
Assuming that Mills' testimony, standing alone, could not corroborate the preparation of the 155A glass, the Donohue record viewed as a whole contains sufficient circumstantial evidence of an independent nature within the meaning of Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980), to satisfy the corroboration rule. Here, Donohue was engaged in an organized program of research and the data obtained from that research were recorded contemporaneously in Donohue's laboratory notebook, which was maintained in the ordinary course of the organized program. The notebook was periodically witnessed by co-workers Rellick and Needes, who were familiar with Donohue's work and worked in the same or the adjoining lab, i.e., making new materials out of glass compositions with lanthanum boride.
Viewing the original evidence as a whole, we conclude that it would not have been unreasonable for Hahn et al. to have assumed that their original evidence provided sufficient circumstantial evidence under the rule of reason to establish that Hahn's work was not inadequately corroborated, i.e., that Hahn et al. were routinely involved in an organized program of research.
For the foregoing reasons, we hold that Hahn et al. have shown "good cause" within the meaning of 37 CFR 1.617(b) why the additional evidence was not initially presented with the original evidence filed under § 1.608(b).
Having reviewed the original evidence in light of the additional evidence, which the majority has properly declined to comment upon [FN2], we conclude that this interference should proceed in the normal manner.
FN1. Under the facts of this case, we consider that a further explanation constitutes a new reason.
FN2. The dispositive issue in this case is whether or not Hahn et al. have shown "good cause." Having decided this issue against Hahn et al., the majority need not consider the additional evidence. 37 CFR 1.617(b); Cf. Kwon v. Perkins, 6 USPQ2d 1747 (BPAI 1988).
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