Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Patent Interference No. 101,424
March 31, 1988
Hearing: July 9, 1987
Application of Phil Kwon filed July 16, 1984, Serial No. 631,294.
Patent granted to Sonnie J. Perkins on June 26, 1986, Patent No. 4,456,257 filed September 16, 1982, Serial No. 418,815.
George M. Thomas and Robert B. Kennedy for Kwon. Oral argument by Robert B. Kennedy
William W. Haefliger for Perkins. Oral argument by William W. Haefliger
Urynowicz, Torchin, Boler, R. Smith, Sofocleous, Caroff and Stoner
Because of the novel issues raised in this case, as discussed below, an expanded panel has been assigned to decide the questions presented.
This interference involves an unassigned application of Kwon and an unassigned patent to Perkins.
The Sole count in issue reads as follows:
(b) means associated with the club to project a first light beam in a first direction lengthwise of the shaft to intersect the ground as the club is held in ball addressing position and then swung rearwardly, and to project a section light beam in a second and diametrically opposite direction lengthwise of the shaft to intersect the ground as the club is swung backwardly and upwardly so the free end of the shaft is directed toward the ground.
The claims of the parties which correspond to this count are:
Kwon: Claims 1 to 25
Perkins: Claims 1 to 13
Both parties submitted evidence in the form of declarations pursuant to 37 CFR 1.672(a) and 1.601(b), answers to interrogatories under 37 CFR 1.688(a) and a stipulation (Paper No. 40), filed briefs under 37 CFR 1.656 and appeared, through counsel, at final hearing for oral argument.
In this case the parties have presented evidence and briefed both the question of whether or not the subject matter in issue is unpatentable to the junior party under 35 USC 102(b)/103 on the basis of an on-sale bar and the question of priority. The present Board, which was formed by the merger of the Board of Appeals and the Board of Patent Interferences (Amendment to 35 USC 7, November 8, 1984, Public Law 98-622), was granted jurisdiction under 35 U.S.C. 135(a), effective February 8, 1985, to decide in an interference proceeding both questions of priority of invention and questions of patentability.
Prior to the amendment to 35 USC 135(a), the jurisdiction of the Board of Patent Interferences was restricted to the question of priority of invention and matters ancillary thereto. Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), cert. denied, ___ U.S. ___, 224 USPQ 736 (1984). A statutory bar under 35 USC 102(b) was not a matter ancillary to priority, and therefore the Board of Patent Interferences had no jurisdiction to decide a question of patentability involving that issue. Anderson v. Scinta, 372 F.2d 523, 152 USPQ 584 (CCPA 1967). Now that § 135(a) has been amended, however, this Board clearly has jurisdiction to decide the question of patentability under 35 USC 102/103 of a party's claims corresponding to the count. Since it appeared to the Examiners-in-Chief who were initially assigned to this case that the subject matter in issue was unpatentable to Kwon, an expanded panel was assigned to the case to review that question and, if the majority concurred in that view, to decide whether the Board should terminate the interference at that point or proceed to also decide the question of priority.
*2 The statute, 35 USC 135(a), now provides '[t]he Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability.' The case of Hilborn v. Dann, 546 F.2d 401, 192 USPA 132 (CCPA 1976), relied upon by the dissent, was decided prior to the amendment to 35 USC 135(a). The Court therein referred to patentability of the count as being the threshold question in an interference. That case involved a petition for a writ of mandamus wherein the Court refused to order the Commissioner to continue an interference with a patent in order to permit the petitioner to litigate the question of fraud by the patentee when the Primary Examiner had held on his own motion under 37 CFR 1.237 that the subject matter in issue was not patentable to the petitioner over prior art. Thus, the holding in Hilborn is deemed to be irrelevant as to whether we should go on to consider the question of priority even if the subject matter of the count is unpatentable to Kwon. The following quotation from Case, supra, is considered pertinent:
While the Court of Customs and Patent Appeals has held a number of issues to the ancillary to the issue of priority, patentability of a party's claims over prior art or patentability of the interference counts over prior art has been consistently and firmly rejected as an issue within the board's jurisdiction. Glass v. De Roo, 239 F.2d 402, 112 USPQ 62 (CCPA 1956) and cases cited therein; Kahn v. Phipard, 397 F.2d 995, 158 USPQ 269 (CCPA 1968); Tofe v. Winchell, 645 F.2d at 64, 209 USPQ at 385 (Markey, C.J., concurring). Moreover, the counts of the interference serve merely as a 'vehicle for contesting priority.' Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA 1977). No purpose would be served in determining patentability of the count itself over the prior art, particularly a phantom count, which by definition neither party asserts as a claim.
Despite this authority, appellant asserts that 'patentability' is always a threshold issue in an interference. In support of this position appellant makes an elliptic quotation from Hilborn v. Dann, 546 F.2d 401, 403, 192 USPQ 132, 134 (CCPA 1976), for the proposition '[T]he 'threshold' question * * * is patentability of the count.' The quotation merely illustrates the delusion in citing as precedent a sentence from a judicial opinion without regard to the issue before the court. Whether the board must determine patentability over the prior art in the interference proceeding was not an issue in Hilborn. The party Hilborn sought a writ of mandamus to compel resumption of a suspended interference and to preclude riview by the Commissioner of a decision by a primary examiner that Hilborn's application (which contained the count as a claim) was not entitled to be in the interference. The issue concerned the court's authority to control the Commissioner's exercise of discretion in setting up or dissolving an interference, not the jurisdiction of the board. (221 USPQ 199; original emphasis)
*3 Thus, prior to the amendment to section 135(a), once the interference reached the final hearing stage, as here, the questions of patentability and priority were treated as independent issues and the Board of Patent Interferences rendered decisions on priority even though the subject matter in issue may have been considered unpatentable by them to one or both parties. Under such circumstances, the Board was authorized to make a recommendation under 37 CFR 1.259 either before or concurrently with their decision on priority. Morgan v. Hirsch, 728 F.2d 1449, 221 USPQ 193 (Fed. Cir. 1984). The Court in Morgan said it was waste of time to decide the question of priority when the Board considered the subject matter unpatentable to both parties and urged the Board to make the recommendation before deciding the equestion of priority in such cases. Prior to amendment of the statute, neither the Board nor the Court had any reservation about deciding priority when the subject matter in issue appeared to be unpatentable to the prevailing party. Case, supra; Morgan, supra; Sheffner v. Gallo, 515 F.2d 1169, 185 USPQ 726 (CCPA 1975); Anderson, supra; Loukomsky v. Gerlich, 264 F.2d 907, 121 USPQ 213 (CCPA 1959); Hendrickson v. Ronning, 76 F.2d 137, 25 USPQ 42 (CCPA 1935). The subject matter in issue is nevertheless prior art under 35 USC 102(g) to the losing party in spite of the fact that the winning party may not be entitled to a patent containing a claim corresponding to the count. By prevailing in the interference, the winning party establishes that he or she was the first inventor and did not abandon, suppress or conceal the invention.
The purpose behind the amendment to the statute and the new interference rules is summarized in the Manual of Patent Examining Procedure (MPEP), Section 2300.01, paragraph 4, as follows:
It is believed that the statutory changes, and the new rules, will result in a more rapid determination of the rights of the parties, and avoid the lengthy proceedings which have characterized some interferences in the past. Since the Board has been given jurisdiction to decide patentability, it will no longer be necessary to decide whether or not an issue is 'ancillary to priority'; the Board can now decide all patentability issues in the interference, if properly raised by the parties, without the necessity for dissolving the interference and pursuing patentability questions ex parte (in which case a reversal of the ex parte rejection would require reinstatement of the interference).
If we did not reach the question of priority at this time and Kwon were to obtain a reversal of our decision as to patentability on appeal, the case would then be remanded to us for a decision on priority. Such a scenario would frustrate the alleged purpose of the changes in the statute and the rules.
The object of the interference will be to resolve all controversies as to all interfering subject matter defined by one or more counts. A final decision in the interference will determine who, if anyone, is entitled to claims which correspond to a count. Any decision adverse to an applicant by the Board will constitute a final refusal by the PTO to that applicant of the claims involved. Any decision adverse to a patentee constitutes cancellation from the patent of the Claims involved.
Again if we decline to reach the question of priority at this time we will frustrate the object of an interference under the new practice by not resolving one of the controversies put in issue by the parties and in fact the controversy that only the Board of Patent Appeals and Interferences has original jurisdiction to decide.
After final hearing, Perkins was requested to brief the question of whether we should reach the question of priority if we held that the subject matter in issue was unpatentable to Kwon and Kwon was given an opportunity to respond thereto. Perkins, in effect, urged that the interference be terminated without rendering a decision on priority and Kwon requested that we reach and decide the issue.
After carefully considering all of the above, we have determined that it shall be the policy of the Board to decide the question of priority when that question is before us at final hearing even though the subject matter in issue is concurrently held to be unpatentable to one of the parties under 35 USC 102 or 103.
Nothing in this decision is intended to preclude an Examiner-in-Chief from requiring the parties at the preliminary motion stage to fully litigate the question of unpatentability of the subject matter in issue (properly raised in a motion under 37 CFR 1.633(a)) to one or more parties and, if appropriate, issue an order to show cause under 37 CFR 1.640(d)(1). Under such circumstances, the interference may well terminate in judgment against one or more or all parties for the reason that the subject matter in issue is unpatentable to the party or parties. In such cases no testimony on the question of priority will have been taken and no decision on priority rendered. However, here the senior party requested that his motion be deferred to final hearing in order to permit testimony to be submitted on the issue of patentability raised therein (37 CFR 1.639(c)). The motion was deferred and the parties have submitted evidence and briefed both the issue of patentability of the subject matter in issue to Kwon and the issue of priority. Thus, as pointed out above, we believe that both issues should be decided at this time.
THE PATENTABILITY QUESTION
*5 Perkins has filed a preliminary motion alleging that the subject matter in issue is unpatentable to Kwon under 35 USC 102(b)/103 on the ground of public use or sale or disclosure in a printed publication of the invention in issue more than a year before Kwon's filing date. The motion was deferred to final hearing (Paper No. 13). In his briefs at final hearing, Kwon argued that the subject matter in issue was patentable over the device referred to in the motion. After final hearing, Kwon was asked to submit a brief pointing out how the subject matter in issue could be deemed patentable to him over the device referred to in Perkins' motion in view of a patent to Mathews et al (U.S. Patent No. 3,070,373) of record in Kwon's application, and Perkins was given an opportunity to respond thereto. Hereinafter, we consider not only the question of patentability of the subject matter in issue to Kwon over the device referred to in Perkins' motion but also over that device in view of the patent to Mathews et al.
Perkins contends that the subject matter in issue is unpatentable to Kwon under 35 USC 102(b)/103 in view of the sale of a device known as the Swing Plane Trainer (trainer) in June of 1982. The Kwon application was filed July 16, 1984, more than one year after the sale. The declarations of Richard Farley and his associate Richard McCord (PR 92 to 94 and 105-106; PX C, D, and E) establish, in our view, that 26 trainers were sold during June 1982.
Kwon argues that the sales recited in the declaration were not public sales on the basis that the sales were at prices much lower than those stated in Perkins' Exhibit E (PX E). Kwon also notes that there is no evidence of royalty income to Perkins from sales by Farley even though Farley testified that he is licensed under the Perkins patent to sell the trainers. We note, however, that all the statute requires is that the device be on sale more than a year prior to the applicant's filing date to constitute a bar. The unrebutted testimony of Farley and McCord is deemed to establish that the trainer was on sale as early as June 1982 and thus constitutes prior art under 35 USC 102(b) against Kwon. In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed. Cir. 1985).
The trainer was in the form of a gold club shaft without a club head. Farley states that it had 'flash lights, oriented to project a first light beam in a first direction lengthwise of the shaft to intersect the ground as the shaft is held in ball addressing position . . . and a second beam of light is projected by a flash light in a second and diametrically opposite direction lengthwise of the shaft to intersect the ground . . . as the club is swung backwardly and upwardly so the free end of the shaft is directed toward the ground.' (PR 93).
In his declaration, Farley referred to PX E, which is a publication entitled 'SWING'S THE THING SWING PLANE TRAINER'. No one testified as to the date when the publication was made available to the public. There is a handwritten notation on PX E to the effect that it was printed in August 1984. On the record before us, PX E is not deemed to be prior art to Kwon since it has not been established that the publication was printed more tha a year prior to Kwon's July 16, 1984 filing date.
*6 Nevertheless, the trainers sold in June 1982, as described in Farley's declaration, constitute a statutory bar to patentability of that subject matter to Kwon under 35 USC 102(b) as well as any subject matter that would have been obvious therefrom under 35 USC 103. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965); In re Dybel, 524 F.2d 1393, 187 USPQ 593 (CCPA 1975).
In our view, the subject matter in issue would have been obvious to one of ordinary skill in the art from the structure embodied in the trainers sold in June 1982. To provide a golf club having not only a shaft but also a ball striking head with means for projecting light beams lengthwise of the shaft in diametrically opposed directions as described in the Farley declaration with respect to the SWING PLANE TRAINER would have been an obvious modification of the trainer. Such a modification would merely incorporate the concept involved in the trainer structure into an instrument of the type normally used in the activity for which the trainer is designed to be used and would perform the same function in the modified structure as it does in the trainer. Kwon's argument to the effect that the trainer does not have the same feel as a golf club does not overcome the fact that it would have been obvious to one of ordinary skill in the art to incorporate the lights used in the trainer in an ordinary golf club.
The subject matter in issue is further barred to Kwon under 35 USC 102(b)/ 103 over the trainer sold in June 1982 as described by Farley in his declaration in view of the patent to Mathews et al, supra. Mathews et al disclose a golf club including a shaft and a ball striking head with a light projecting means attached to the lower end thereof for the purpose of aiding a golfer in learning the proper manner in which to swing the club. We hold that to provide the club disclosed by Mathews et al with light projecting means of the type used in the trainer or to provide the trainer with a ball striking head would have been obvious to one of ordinary skill in the art more than a year prior to the filing date of the Kwon application.
Kwon has made a detailed analysis of how the Mathews et al device is intended to be used (Paper No. 53). However, that analysis is deemed irrelevant to the question at hand, which is merely whether Mathews et al would have suggested to one of ordinary skill in the art modification of the trainer to include a ball striking head or modification of the club disclosed by Mathews et al to include oppositely directed light beams extending parallel to the shaft as used in the trainer in lieu of the light source used by Mathews et al. Accordingly, we hold that the collective teachings in the two references would have rendered the subject matter in issue prima facie obvious to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kwon's arguments have been carefully considered but, in our view, fail to overcome the prima facie case of obviousness established by the references.
*7 Accordingly, kwon is not entitled to a patent on his claims corresponding to the count since that subject matter would have been obvious to one having ordinary skill in the art for more than a year prior to his filing date.
Claims 1 to 25 of Kwon were designated as corresponding to the court when the interference was declared and Kwon did not file a motion under 37 CFR 1.633(c)(4) to redefine the interference by designating any of those claims as not corresponding to the count. Kwon is not entitled to argue at this stage that there is a patentable distinction between some of his claims and the subject matter in issue (37 CFR 1.655(b)). Thus, claims 1 to 25 stand or fall together and are all held to be unpatentable under 35 USC 102(b)/103 for the reasons stated.
KWON'S CASE FOR PRIORITY
Kwon filed his application after the senior party's patent issued. Thus, Kwon must prove his case for priority beyond a reasonable doubt. Paivinen v. Sands, 339 F.2d 217, 144 USPQ 1 (CCPA 1964), amended, 52 CCPA 1030 (1965).
Kwon declares that he conceived the invention inMay 1981, disclosed it to his neighbor Dr. Sun Hee Kim during that month and demonstrated a device meeting the terms of the count to Dr. Kim in June 1981. Kwon, therefore, alleges conception in May 1981 and reduction to practice in June 1981. He further declares that he demonstrated a device meeting the terms of the count to Byong Soo Kim in August 1981 and to Wuk Eun in May 1982. Declarations have been submitted by Sun Hee Kim, Byoung Soo Kim and Wuk Eun which corroborate Kwon's testimony. Based on the declaration of Sun Hee Kim, we hold that Kwon has established conception in May 1981 and a reduction to practice in June 1981. The declarations of Byoung Soo Kim and Wuk Eun are deemed to be cumulative in that they establish further reductions to practice by Kwon by the end of May 1982, which is well prior to the September 16, 1982 filing date of the application that matured into the involved Perkins patent.
Perkins argues that the proof submitted by Kwon does not show conception or a reduction to practice of 'means associated with the club to project a first light beam in a first direction lengthwise of the shaft to intersect the ground as the club is held in ball addressing position and then swung rearwardly' (emphasis supplied in Perkins' brief, page 3). In the second paragraph of his declaration, Kwon testified that he thought of mounting lights to a golf club 'so as to project two light beams in opposite directions alongside the club shaft so as to trace light paths upon a floor or the ground while swinging the club, as described [in] Count I of the interference, at my home in Marietta, Georgia in May of 1981.' In paragraph five, Kwon states '[a]t the time I asked Dr. Kim for the two flashlights[.] I explained to him my concept of mounting two lights to an ordinary golf club so as to project beams as above described for the above described purpose.' The time referred to is May 1981. Dr. Kim declared that 'Mr. Kwon told me that he had discovered a new way of practicing golf swings by attaching two flashlights to an ordinary golf club with their beans directed opposite each other parallel to the club shaft, by then swinging the modified club while observing the path that the two beams traced on the terrain as the club was swung, and then by modifying the swing so as to cause the beams to make superimposed linear traces on the terrain along the line of desired ball flight.' This testimony is deemed to show that Kwon's conception as of May 1981 included the above limitation alleged to be missing by Perkins.
*8 On page 4 of his brief, Perkins alleges that Kwon's proofs do not show a conception or reduction to practice of means 'to project a light beam in a second and diametrically opposite direction lengthwise of the shaft to intersect the ground as the club is swung backwardly and upwardly so the free end of the club is directed toward the ground.' (Emphasis supplied in the brief). Dr. Kim said that Kwon told him the two flashlights were to be attached to an ordinary golf club with their beams directed opposite each other parallel to the shaft and were 'to make superimposed linear traces on the terrain along the line of the desired ball flight.' This description meets both the limitation regarding the 'diametrically opposite direction' and the limitation regarding the second beam intersecting the ground when the club is swung backwardly and upwardly 'so the free end of the club is directed toward the ground.' It is noted that the count is less specific than Dr. Kim's testimony in that the count does not require the trace from on beam to be superimposed over the trace from the other beam. Thus, Dr. Kim's testimony is deemed to fully corroborate conception of every limitation in the count as of the end of May 1981.
Dr. Kim further testified that he witnessed Kwon demonstrate a practice golf club having two flashlights attached thereto 'so as to emit two beams of light in opposite directions alongside and parallel to the club shaft' in June 1981. Kim' testimony regarding the demonstration Kwon performed for him is deemed to establish that Kwon reduced the invention to practice by the end of June 1981.
Kwon testified that he told Byoung Soo Kim of the invention and demonstrated it to him in August 1981. Mr. Kim places the meeting in May 1981 rather than in August but otherwise corroborates Kwon's testimony. We consider Mr. Kim's testimony sufficient to establish an additional reduction to practice by Kwon no later than the end of August 1981. Mr. Eun's testimony corroborates Kwon's to the effect that Kwon demonstrated the invention to Mr. Eun in May of 1982 and establishes an additional reduction to practice as of that time.
THE PERKINS CASE FOR PRIORITY
Since Kwon has established a date of invention prior to the filing date of Perkins, the burden shifts to Perkins to establish an earlier date of invention by a preponderance of the evidence. D'Amico v. Brown, 155 USPQ 534 (Bd.Pat.Int. 1967); Fisher v. Gardiner, 215 USPQ 620 (Bd. Pat. Int. 1981).
Perkins alleges conception of the invention in issue in December 1979 and a reduction to practice thereof in June 1980. Exhibits A and B are drawings purportedly made by Perkins on December 16, 1979 and on March 13, 1980, respectively. Exhibit A is said to show 'light sources directed axially oppositely on a club shaft'. Exhibit B is said to also show the invention and Perkins states in paragraph 3 of his declaration '[n]ote the club having a head and shaft . . . .' Exhibits A and B and the testimony of Perkins with respect thereto have not been corroborated by evidence independent of the inventor and, accordingly, cannot properly be relied upon to establish conception. Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936 (CCPA 1981); Davis v. Reddy, 620 F.2d 885, 205 USPQ 1065 (CCPA 1980).
*9 Perkins 'attached two flash lights to a bracket that was in turn attached to a golf club grip.' He demonstrated this device to, inter alia, Bruce Hough in March of 1981. This testimony was corroborated by Hough. Perkins stipulated at Page 107 of his record that each occurrence of the phrase 'golf club grip' in his declaration and the declaration of Hough 'was intended to mean a grip mounted to a shaft without a ball striking head like that shown in Exhibit E of the Perkins Testimony-in-Chief and referred to as the 'Swing Plane Trainer'.' Kwon contends, and we agree, that Perkins has failed to establish even conception of the invention in count 1 prior to his filing date since Exhibit B which shows a golf club having a head and shaft has not been authenticated as to date or content and the device demonstrated to Hough did not include a 'ball striking head' as required by the count. It is one of the most well settled principles of interference law that the device relied upon for a reduction to practice must meet every limitation of the count. Schur v. Muller, 372 F.2d 546, 152 USPQ 605 (CCPA 1967); Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 (CCPA 1968), cert. denied, 393 U.S. 980, 159 USPQ 799 (1968); Szekely v. Metcalf, 455 F.2d 1393, 173 USPQ 116 (CCPA 1972); Wetmore v. Quick, 536 F.2d 937, 190 USPQ 223 (CCPA 1976); Paine v. Inoue, 195 USPQ 598 (Bd.Pat.Int. 1976). The same is true of conception. Davis, supra. Perkins' argument to the effect that the distal end of the golf club grip used in the March 1981 demonstration can be considered a ball striking head is deemed to be without merit in view of the stipulation (PR 107) and Perkins' description of the club depicted in Exhibit B as having a 'head and shaft.' Clearly the device used by Perkins in the March 1981 demonstration had only a short shaft and no portion thereof was intended to serve as a 'ball striking head'. We note that Perkins could have suggested a count during the motion period which excluded the limitation to the ball striking head after reviewing his proofs, but no such motion was made. DeBenneville v. Anderson, 212 F.2d 612, 101 USPQ 403 (CCPA 1954). It is not and should not be the function of this Board to look at the evidence and then reform the count in a light more favorable to one of the parties.
Since Perkins has not established conception prior to Kwon, his allegations of diligence from prior to Kwon's date of conception need not be considered. We note, however, that the mere statement in paragraph 5 of Perkins' declaration that '[b]etween December 1979 and September 16, 1982 I was continuously engaged in testing, demonstrating and improving my invention, including different ways to mount lights on golf clubs and grips' and an even less informative statement in Hough's declaration are insufficient to establish diligence during any portion of said period because the testimony is not specific as to dates and facts. Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA 1949); Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA 1981).
*10 After reviewing the evidence presented by both parties, we conclude that Kwon has established that he is the first inventor of the subject matter in issue.
In Paper No. 17, partial summary judgment was entered against Kwon with respect to his claim 22 and against Perkins with respect to his claim 4. Time for appeal with respect to those judgments commences to run as of the date of this decision.
Judgment as to priority of invention of the subject matter in the count is awarded to Phil Kwon, the junior party. Sonnie J. Perkins is not entitled to a patent containing claims 1 to 13 corresponding to the count.
Judgment is also entered against Phil Kwon, the junior party, on the ground that the subject matter in issue is not patentable to him. Phil Kwon is not entitled to a patent containing claims 1 to 25 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Ian A. Calvert
James R. Boler
Marc L. Caroff
Bruce H. Stoner, Jr
R. Smith and M. Sofocleous
We agree with the decision of the majority insofar as it holds that all the Kwon claims corresponding to the count (claims 1 to 25) are unpatentable to Kwon under 35 USC 102(b)/103. However, we believe the Board should, after holding that Kwon does not have a patentable claim corresponding to the count, issue judgment against Kwon and in favor of Perkins. In our view there is no priority issue for our determination in the absence of a patentable claim to Kwon. As the Court noted in Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976):
The patentability of the count to petitioner is determinative of whether petitioner's application 'would interfere' with the Cuthbert patent. As is clear from 35 USC 135, that question is fundamental to the existence of any question of priority in the Patent and Trademark Office.
* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *
We agree with the Commissioner that the 'threshold' question is . . . patentability of the count, which is determinative of whether interference exists. The sole raison d'etre for interferences is determination of priority of invention with respect to patentable subject matter . . .
The majority notes on page 3 of their decision that Hilborn involved a petition for a writ of mandamus wherein the Court refused to order the Commissioner to continue an interference with a patent after the Primary Examiner had held on his own motion under 37 CFR 1.237 that the subject matter in issue was not patentable to the petitioner over prior art. The majority then concludes:
[t]hus, the holding in Hilborn is deemed to be irrelevant as to whether we should go on to consider the question of priority even if the subject matter of the count is unpatentable to Kwon.
*11 In our view, however, the basis for the holding in Hilborn, supra, is just as relevant here as it was in Hilborn. Thus, the fact that the Court found no abuse of discretion where the Commissioner refused to continue an interference after a determination was made that the claims were unpatentable to petitioner does not imply the converse. If the Commissioner's representative were to declare or continue an interference after the claims had been found unpatentable, such might well be found to constitute an abuse of discretion.
A threshold question is one that must be successfully passed before any question of priority of invention exists. Thus, if the Primary Examiner had been aware of the basis for holding Kwon's claims to be unpatentable to Kwon, no interference would have been declared [FN1] because '[t]he question as to patentability of claims to an applicant must be determined before any question of interference arises . . .' Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966). Similarly, the majority recognizes on page 7 of their decision that, if the evidence of unpatentability were presented with a motion for summary judgment pursuant to 37 CFR 1.633(a), the interference may well terminate in a judgment based on unpatentability with no decision on priority. It defies logic to conclude that a threshold question that must be overcome prior to the existence of any priority question is transformed by the mere act of deferring a decision on the threshold question until final hearing.
We know of no case where a holding of unpatentability of the subject matter of a count to a party has been followed by a determination of priority of invention with respect to that party. In the case of Weston v. Jewell, 1902 C.D. 20, 98 O.G. 417, a patent had been granted to Jewell, and Weston filed an application for the same invention. An interference was declared to determine priority of invention. It was thereafter determined that the invention was unpatentable to Weston due to prior public use. In holding that the interference should not have been instituted, the Commissioner stated:
It being apparent that Weston is not entitled to a patent bacause of two years' public use of his alleged invention, the question of priority of invention raised by the interference is a moot question. This office is not concerned with the validity of Jewell's patent, but merely with the question whether a patent shall be granted to Weston. Once that is settled this Office must refuse to pass upon the moot question whether he was prior in point of time to some other party.
The decision in Weston has been followed by the courts in more recent decisions. Thus, in Morgan v. Hirsch, 728 F.2d 1449, 221 USPQ 193 (Fed. Cir. 1984), the Court made clear its view that a question of patentability should be faced and decided before reaching the issue of priority, and the Court plainly was of the view that if the invention is held to be unpatentable, the priority question would not arise. The Court noted at 221 USPQ 196:
*12 The present case . . . involves the more fundamental question whether an interference should continue to a conclusion on priority in the face of a clear possibility that it is an exercise in futility. That possibility should be settled when it arises. See also Vandenberg v. Reynolds, 242 F.2d 761, 765, 113 USPQ 275, 278 (CCPA 1957).
In Vandenberg the Court held that no award of priority should have been made prior to a decision on a threshold question of whether the Reynolds application should have been stricken from the files. Accordingly, without reaching the merits of the Board's decision on priority of invention the Court reversed that decision and remanded the case to the Office. It appears clear from the language of the Court that it was the Court's view that the threshold question should have been decided before the priority issue was addressed and that if the threshold was not passed, i.e., if the Reynolds application were to be stricken, there would be no priority issue to decide, the Board's decision on priority notwithstanding.
Assuming for the sake of argument that the majority is correct in deciding both patentability and priority, then we would reform the interference.
The purpose of the 'new rules,' as set forth in 37 CFR 1.601, is to secure the 'just, speedy, and inexpensive determination' of every interference. The majority's decision constitutes, in effect, a holding that Perkins' claims corresponding to the count are unpatentable over his proofs for actual reduction to practice. We consider this to be an unjust result. To prevent this we would exercise our discretion under § 1.655(c) to redeclare this interference by substituting for count 1 a new count which deletes the term, 'and ball striking head' from count 1. Such action is warranted here in order to prevent a manifest injustice.
In accordance with 37 CFR 1.601(f), the count of an interference defines the interfering subject matter between an application and a patent. In accordance with 37 CFR 1.606, the examiner must determine that the interfering subject matter claimed in the application is patentable to the applicant subject to a judgment in the interference. Having made this determination, the examiner must formulate a count following the three principles set forth in § 2309.01 of the MPEP. In this case, the examiner violated the second principle, i.e.
The count should normally be sufficiently broad as to encompass the broadest patentable claim of each of the parties.
because he did not formulate a count broad enough to encompass Kwon's claim 11. This claim is directed to a device of the count which does not require a ball striking head. The examiner apparently considered claim 11 to be patentable over prior art and to be directed to the same invention as count 1, there being no indication otherwise in the declaration of this interference.
*13 As noted by the majority, it is a well established principle of interference practice that the device relied upon for a reduction to practice must meet every limitation of the count. Here, the device relied upon by Perkins for his actual reduction to practice met every limitation of count 1 except for the 'ball striking head' limitation. The majority found that this limitation is an obvious one which would not lend patentability to the subject matter of the count, i.e., there is only one patentable invention involved here, whether the ball striking head is recited or not recited.
The majority found that Perkins' device was on sale in this country more than one year prior to the filing date of Kwon's application and held that this sale constituted a bar under 35 U.S.C. 102(b)/103 against Kwon, but not against Perkins. Because an actual reduction to practice must include every limitation of the count, as noted by the majority, Perkins' device did not constitute an actual reduction to practice of the count on Perkins' behalf, but was sufficient to constitute a finding of unpatentability under 35 U.S.C. 102(b)/ 103. We consider that this result is unjust because the majority have invalidated an otherwise valid patent for the sole reason that the count improperly includes a limitation to a 'ball striking head' whereas Kwon's broadest claims do not. Thus, in our view the majority reaches the anomalous result of awarding priority against Perkins, the first inventor, because the interference was improperly declared with a count narrower than the broadest patentable claim and because the majority improperly decided the priority issue after finding that Kwon's claims are unpatentable to Kwon in view of Perkins' earlier sale of the invention of the count.
As his basis for having judgment in his favor, Perkins, the senior party, relies upon the established law that the threshold question of an interference is the patentability of the applicant's claim corresponding to the count to the applicant. Arguably, Perkins could have filed a notice under § 1.632 urging that Kwon had suppressed or concealed his invention or could have filed a motion to substitute a broader count. However, while Perkins could have taken such action, and in light of the majority's decision should have taken such action, we consider that Perkins' reliance upon the established case law constituted a sufficient basis for him to prevail in this proceeding.
For the foregoing reasons, if the priority issue is reached we would exercise our discretion to redeclare this interference on a broader count and would award judgment to Perkins.
FN1. Before an interference is declared between an application and an unexpired patent, an examiner must determine that there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in the interference. 37 CFR 1.606; The Manual of Patent Examining Procedure (MPEP), Fifth Edition, §§ 2307.02 and 2308.02.
*14 Norman G. Torchin
I agree with the majority that, under the circumstances of this case, we must look into the priority question as well as the patentability question. I also agree with the majority that the subject matter is unpatentable to Kwon and that Perkins has not established a reduction to practice of the count. However, I also agree with so much of the preceeding minority opinion as would hold that the particular facts of this case beg for our exercise of discretion under the 'manifest injustice' provision of 37 CFR 1.655(c) [FN1] to reform this interference with a broader count.
Certainly, as suggested by the majority, we should not act as an advocate for one party in an interference to the detriment of the other. The duty clearly falls to a party to consider, inter alia, his case for priority to determine whether his proofs conform to each and every limitation of the count prior to filing any preliminary motions under 37 CFR 1.633. If his proofs do not conform to each and every limitation of the count, he should move to substitute a (proper) count which he can prove. [FN2]
However, two factors, discussed in more detail in the preceeding minority opinion, convince me that it behooves us to reform. First, the Office was in error in the declaration of this interference; the count was not as broad as it apparently should have been. Second, Kwon, in having presented a claim directed to the precise subject matter as that of the Perkins' proofs, is in a questionable position to urge that Perkins' proofs do not establish prior invention of the common subject matter. Compare, inter alia, Metcalfe v. Hampel, 532 F.2d 1360, 189 USPQ 575 (CCPA 1976) (A party whose disclosure is no better than his adversary's is in no position to attack the adequacy of his adversary's disclosure).
I would therefore withhold any judgment as to Perkins--for or against--until such time as his evidence for priority can be evaluated vis-a-vis the proper count. This would not be unduly prejudicial to Kwon because he would surely be given an opportunity to file a proper response to the reformation. Judgment against Kwon would be withheld until such time as his response--limited of course to the issue of the reformation--has been fully considered and a final judgment could be entered as to both parties. [FN3]
Suffice it to say our exercise of discretion under § 1.655(c) is to be used only under the most extraordinary of circumstances. The exercise of discretion under the particular facts here would in no way be intended as a panacea for those who do not take into account their entire case, and in particular their case for prior inventorship, before filing their first preliminary motion.
FN1. See U.S. Department of Energy v. Dougherty, 687 F.2d 432, 215 USPQ 4, 11 (CCPA 1982): '[T]he matter is committed to the sound discretion of the board . . ..'
FN2. See, generally, Torchin, 'The Pitfall of Interference Practice: 37 CFR 1.231,' 60 J. Pat. Off. Soc'y 579, 592 (1978): 'If your proofs do not conform to the count, move to substitute a count which you can prove.' Though this article, as well as DeBenneville v. Anderson, cited in the majority opinion, was written with respect to the 'old' rules (37 CFR 1.201, et seq.), the principle applies at least as well to the 'new' rules (37 CFR 1.601 et seq.).
FN3. A party is entitled to participate in an interference until such time as judgment has been entered against him.
*15 Stanley M. Urynowicz, Jr.
I agree with the decision of the majority that all the Kwon claims corresponding to the count are unpatentable to Kwon under 35 USC 102(b)/ 103. However, I agree with the minority, Smith and Sofocleous, that there is no priority issue for our determination in the absence of a patentable claim ot Kwon for the reasons given in their dissent-in-part and that the Board should issue judgment against Kwon and in favor of Perkins.
Assuming for the sake of argument that both patentability and priority should be decided herein, then I agree with the majority that judgment should be entered against both parties for the reasons stated in the majority opinion.