Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)

 

*1 L'ESPERANCE ET AL.

v.

NISHIMOTO ET AL.

Interference No. 101,882

May 22, 1989

 

Marc L. Caroff

 

 

Examiner-in-Chief

 

 

Decision on Motions

 

 The following preliminary motions under 37 CFR 1.633 have been filed:

   (1) Nishimoto et al (N) motion to designate its claims 3, 5-8, 21-22, 24, 33-35, 39-40, 47 and 49-51 as not corresponding to the count (Paper No. 9). Unopposed.

   (2) N motion for judgment (Paper No. 10) of unpatentability to L'Esperance et al (L) of claims 1-10 under 35 USC 112, second paragraph. Opposition by L (Paper No. 14); Reply by N (Paper No. 15).

   (3) L motion for judgment (Paper No. 13):

 A. of unpatentability to N of claims 3 and 5-59 under 35 USC 112, first paragraph. Opposition by N (Paper No. 17); Reply by L (Paper No. 22);

 B. of unpatentability to N of claims 3 and 5-59 under 35 USC 102(b) and/or 35 USC 103 in view of Offenlegungsschrift 1936078 (Karner). Opposition by N (Paper No. 16); Reply by L (Paper No. 21).

   (4) N motion under § 1.633(i) to amend its claims 20, 36 and 52-59 (Paper No. 18). Unopposed.

   (5) N motion to be accorded benefit of the filing date of Japanese application 76699/1985 as to its proposed amended claims (Paper No. 20). Opposition by L (Paper No. 24).

   (6) L motion to designate its claims 2-4, 6 and 11 as not corresponding to the count (Paper No. 13 1/2 ). Opposition by N (Paper No. 19); Reply by L (Paper No. 23).

 

 

Motion (3)B

 

 The motion is granted. N concedes that its claims 9-18, 23-25, 29, 32, 37-39, 41-43 and 48 are unpatentable over Karner. See Paper No. 16. By conceding that claim 9 is unpatentable, N in effect concedes that the invention defined by the count is also unpatentable since claim 9 is identical to the count. In view of the concession of unpatentability by N as to its generic claims and the count, the remaining claims of N, i.e., claims 3, 5-8, 19-22, 26-28, 30-31, 33-36, 40, 44-47 and 49-59, are considered to be unpatentable over the prior art as well. In this regard, it is noted that the Commissioner through his delegate, the Primary Examiner, determined at the outset of the interference that all of the pending claims of N correspond to the count or, in other words, define the "same patentable invention" as the count. See § 1.601(f) and (n). Therefore, it is presumed that none of the claims of N define a separate patentable invention with respect to the count, and the burden of persuasion rests upon the party, here N, urging the contrary. Cf. Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed.Cir.1984), cert. denied, --- U.S. ----, 224 USPQ 736 (1984). Mere reference by N to claimed features and alleged advantages which are not disclosed by Karner and not included in the count does not per se establish "separate patentability" within the meaning of § 1.601(n). Rather, the question is whether those features and advantages would have been obvious to a person of ordinary skill in the art. This question has not been adequately addressed by N. N has failed to present a thorough analysis of Karner in light of other prior art references of record, including prior art cited during ex parte prosecution of the parties' involved applications, in accordance with the guidelines set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). For example, with respect to claims 3 and 5-8, it appears that the Schmit reference was relied upon during ex parte prosecution to establish the obviousness of wrapping a twisted cord around a core element. With respect to claims 33, 46-47 and 51-59, it appears that Riley was relied upon to show alternative materials which are used in producing reinforcing fibers. With respect to claims 19-22, 26-28, 30-31, 34-36, 40, 44-45 and 49-50, N has failed to present any evidence to establish that the selection of specific system parameters and materials would be anything other than an obvious matter of routine design choice. Mere argument by an attorney is of no probative value. Meitzner v. Mindick, 549 F.2d 775, 193 USPQ 17 (CCPA 1977), cert. den., 434 U.S. 854, 195 USPQ 465 (1977).

 

 

  *2 The undersigned Examiner-in-Chief hereby moves sua sponte under 37 CFR 1.610(e), 1.633(a) and 1.641 for judgment on the ground that all the claims of L corresponding to the count are unpatentable under 35 USC 102(b) and/or 35 USC 103 over the prior art, particularly Karner. As pointed out by N in its opposition, L claims 1, 5, 7-10 and 12 are identical to N claims 9 and 11-16, which claims are argued by L in its motion to be unpatentable over Karner. Therefore, it appears that L at least tacitly concedes that its identical claims 1, 5, 7-10 and 12 are also unpatentable over Karner. Since L claim 1 is identical to the count, it is presumed that all of the claims of L which were designated by the Primary Examiner as corresponding to the count, including claims 2-4, 6 and 11, are unpatentable over the prior art as well absent evidence of separate patentability essentially for the reasons discussed above relative to N claims 3, 5-8, 19-22, 26-28, 30-31, 33-36, 40, 44-47 and 49-59. In this regard, it is noted that L, like N, has failed to analyze its claims in the light of known prior art in addition to the Karner reference, and has failed to present any credible evidence to establish that any differences between the prior art and the claims in issue would not have been within the expected skill of a person versed in the subject art. Graham v. John Deere Co., supra.

 

 

Motions (1) and (6)

 

 These motions are denied essentially for the reasons set forth above with respect to motion (3)B. A movant seeking to have claims designated as not corresponding to a count has the burden of making a case for separate patentability. 37 CFR 1.637(c)(4)(ii). As noted above, merely pointing out differences between each of the claims in issue and the count does not per se establish separate patentability or, in other words, establish that the asserted differences represent subject matter which would not have been obvious to a person of ordinary skill in the art.

 

 

Motions (2) and (3)A

 

 These motions are dismissed as moot in view of the finding, supra, that all of the claims of each party which correspond to the count are unpatentable over the prior art.

 

 

Motion (4)

 

 The motion to amend claims is denied since the involved claims, even if amended as proposed, are considered to be unpatentable for the reasons set forth above with respect to motion (3)B.

 

 

Motion (5)

 

 The motion is dismissed as moot in view of the denial of motion (4).

 

 

Order to Show Cause

 

 In view of the finding, supra, that all of the claims of each party which correspond to the count are unpatentable over the prior art, notice is hereby given pursuant to the provisions of 37 CFR 1.640(d) that judgment on the record as to those claims will be entered against both the junior party and the senior party unless they shall within twenty (20) days from the date of this decision, show cause why such action should not be taken. Should either party elect to show cause why judgment should not be rendered, attention is directed to 37 CFR 1.640(e) and the guidance provided in the Commissioner's Notice of January 6, 1987, "Interference Practice: Response to Order to Show Cause under 37 CFR 1.640", 1074 O.G. 4.

 

 

  *3 Should either party wish to present its views under 37 CFR 1.641 regarding the finding of unpatentability, it may do so as part of its response to the show cause order, or, instead, merely file a request that final hearing be set to review the finding accompanied by a motion requesting a testimony period, if the party desires to take testimony.

 

 

 The preliminary statements filed by each party remain sealed on the record.

 

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