Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 HSING
v.
MYERS ET AL.
Patent Interference No. 101,542
April 28, 1987
Olefin Conversion Process
Application of Hsu-Hui Hsing filed March 12, 1984, Serial No. 588,400.
Patent granted to John W. Myers and Daniel J. Strope on March 13, 1984, Patent No. 4,436,949 filed September 21, 1982, Serial No. 420,970.
Kenneth H. Johnson for Hsing
Louis N. French, James H. Hughes, Howard D. Doescher, Jack E. Phillips, James W. Williams, Bernhard H. Geissler, John D. Olivier, Bion E. Hitchcock and John M. Fish, Jr. for Myers et al.
Before Torchin, R. Smith and Sofocleous
Examiners-in-Chief
Sofocleous
Examiner-in-Chief
Final Decision
This interference involves an application of Hsing, assigned to Peteo-Tex Chemical Corporation, and a patent of Myers et al. (Myers), assigned to Phillips Petroleum Company.
The subject matter of this interference concerns a process for converting olefins and is defined by the following count:
A process for the conversion of at least one olefin which comprises adding to said olefin at least 0.10 mole percent of water and thereafter contracting the resulting wet olefin with an acidic alumina catalyst, or
A process for the isomerization of C4 alkenes comprising feeding a stream in vapor phase containing C4 alkenes and about 0.01 to 1.0 mole of water per mole of alkene, through a fixed bed of particulate catalyst consisting of gamma alumina having a sodium content of less than 0.01 weight percent, calculated as Na2O, at a temperature in the range of 300<<degrees>> C to 600<<degrees>> C at an LHSV in the range of 0.15 to 12.
Claims 1 to 26 of Hsing and claims 1 to 19 of Myers correspond to this count.
In the Examiner-in-Chief's (EIC's) decision on motions (Paper No. 15) as modified in our decision of December 15, 1986 (Paper No. 21), it was considered that Hsing's claims corresponding to the count define a separate patentable invention over the invention defined by Myers et al.'s claims corresponding to the count. Since an interference-in-fact did not exist, it was considered that the Myers patent was available as a reference against the Hsing claims, because Myers discloses but does not specifically claim the invention defined by Hsing's claims. Since Hsing's claims read on the Myers patent disclosure, the Hsing's claims are anticipated under 35 U.S.C. 102(e) by Myers. In view of the foregoing, preliminary statements were opened, their service was ordered and Hsing was notified that judgment would be rendered against him unless he filed his views showing show good cause why such action should not be taken.
In response to the show cause order, Hsing filed a copy of his declaration under 37 CFR 1.131, which was filed during the ex parte prosecution of his application, and a brief; Myers filed a motion for withdrawal of our requirement to serve preliminary statements and a paper setting forth his views with respect to Hsing's response and requesting the right to cross-examine the declarant. The EIC issued an order (Paper No. 28) setting a time for cross-examination. Hsing has filed a motion for reconsideration of the order and Myers has filed a motion to waive cross-examination.
*2 Based on the foregoing, the following matters are before us for consideration:
1. Myers' motion for withdrawal of the requirement to serve preliminary statements.
2. Hsing's motion for reconsideration of the order setting a time for cross-examination.
3. Myers' motion to waive cross-examination.
4. Hsing's response to the show cause order and Myers' views with respect thereto.
Motion for Withdrawal of the Requirement to Serve Preliminary Statements
In the motion, Myers urges that in our decision of December 15, 1986, we should not have ordered that preliminary statements be served. Myers requests that each statement be resealed and be returned to the respective party who submitted it. Myers contends that having found that an interference-in-fact does not exist, the Board should not have required preliminary statements to be served, because their service is unjustified.
Upon further reflection and under the circumstances of this case, the motion is granted. Because of our holding of no interference-in-fact, the preliminary statements, which contain the parties' allegations of dates of invention, are not relevant to the question of the patentability of Hsing's claims. In accordance with 37 CFR 1.629(e), Hsing cannot use his preliminary statement as evidence on his behalf. Accordingly, each statement is resealed and is being returned to the respective party submitting it.
Hsing's Motion for Reconsideration of the Order Setting Cross-Examination and Myers' Motion to Waive Cross-Examination
In his motion, Hsing alleges that the EIC in his order of February 27, 1987 should not have set a time for cross-examination. It is Hsing's position that the holding of no interference-in-fact is dispositive of this interference, that the interference should be terminated and that the question of patentability of his claims can and should be decided ex parte. Hsing urges that Myers is now in the same position as that of a 'simple protestor' under 37 CFR 1.291 and is not entitled to cross-examine the declarant.
Hsing's arguments are not considered well taken.
This is an inter partes proceeding. The question of the patentability of Hsing's claims was properly raised in this proceeding. Consequently, the interference will not be terminated until a final decision is rendered on that question, which decision will govern further proceedings in the PTO.
Contrary to Hsing's arguments, Myers is entitled to cross-examine the declarant. By relying upon the provisions of 37 CFR 1.671(e), the party Hsing has, in effect, moved for a limited testimony period to introduce the ex parte declaration into evidence. For that reason, the opposing party is entitled to cross-examine the declarant. See 37 CFR 1.672(b).
In any event, the Hsing motion is moot inasmuch as Myers has waived his right to cross-examination.
*3 To the extent that Myers seeks to waive 'without prejudice' his right to cross-examination, the Myers motion is denied. It would not be in the interest of orderly procedure to permit a party to waive without prejudice his right to cross-examination and then to reassert the right at a later stage of the proceeding. No good reason has been presented by Myers as to why he could not cross-examine the declarant within the time set therefor.
Hsing's Response to the Show Cause Order and Myers' Views With Respect Thereto
In his response to the show cause order, Hsing elected to rely only upon the Rule 131 declaration, served a copy thereof on Myers and filed a brief, explaining his position with respect to the declaration.
In his views on the response, Myers urges that the declaration is insufficient to establish a reduction to practice of Hsing's invention prior to Myers' filing date because the declaration does not specifically state that the corroborating laboratory notebook pages and data summary sheets were in existence prior to Myers' filing date of September 21, 1982.
We do not consider that Myers' position is well taken. We have reviewed the declaration and conclude that it is sufficient to establish a completion of Hsing's invention prior to Myers' filing date within the meaning of 37 CFR 1.131. In the declaration, Hsing declares that he reduced to practice the invention claimed in his application prior to Myers' filing date, that the work was performed by him or at his direction and that the documentary exhibits [FN1] attached to the declaration represent his reduction to practice.
For the foregoing reasons, we conclude that Hsing has shown good cause why his claims are patentable. Accordingly, we enter the following judgment.
JUDGMENT
It is hereby adjudged that an interference-in-fact does not exist. Accordingly, on the present record,
Hsu-Hui Hsing is entitled to a patent containing his claims 1 to 26; and
John W. Myers and Daniel J. Strope are entitled to a patent containing their claims 1 to 19.
BOARD OF PATENT APPEALS AND INTERFERENCES
Norman G. Torchin
Examiner-in-Chief
Ronald H. Smith
Examiner-in-Chief
Michael Sofocleous
Examiner-in-Chief
FN1. In his motion for reconsideration, supra, Hsing calls our attention to the fact that we had opened his preliminary statement and that the 'fallacy of party Myers' single point of contention in his Views is known' to us. As we indicated before, § 1.629(e) does not permit Hsing to rely on his preliminary statement as evidenced in his behalf.
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