Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 M * * *
v.
V * * *
August 14, 1987
Ronald H. Smith
Examiner-in-Chief
Decision on Motions
The following motions have been filed:
(A). By V * * *
(1) Under 37 CFR 1.633(c) to redefine the interfering subject matter by substituting Count A for Count 1 and by designating V * * * claims 11, 17 and 18 as not corresponding to the count. Motion filed April 21, 1986 (c.o.m. 4/15/86) (Paper No. 10); opposition by M * * * (Paper No. 34); reply by V * * * (Paper No. 40).
(2) Under 37 CFR 1.633(f) to be accorded benefit of the Motion filed April 21, 1986 (c.o.m. 4/15/86) (Paper No. 13); opposition by M * * * (Paper No. 35); reply by V * * * (Paper No. 39).
(3) Contingent motion under 37 CFR 1.633(c)(1) to redefine the interfering subject matter by amending V * * * involved application claims 1, 5 and 17. Motion filed May 5, 1986 (Paper No. 20); opposition by M * * * (Paper No. 45).
(4) Contingent motion under 37 CFR 1.635 to take the testimony of Examiners J * * * and D * * *. Motion filed May 5, 1986 (Paper No. 21); opposition by M * * * (Paper No. 46).
(5) Under 37 CFR 1.635 for non-consideration of the M * * * reply to the opposition to M * * *'s motion to redefine the subject matter of the interference. Motion filed June 10, 1986 (Paper No. 49); opposition by M * * * (Paper No. 56).
(6) Under 37 CFR 1.635 for non-consideration of the M * * * reply to the opposition to M * * *'s motion for judgment. Motion filed June 10, 1986 (Paper No. 50); opposition by M * * * (Paper No. 55).
(1) Motion to be accorded benefit of the Motion filed April 15, 1986 (Paper No. 15); opposition by V * * * (Paper No. 30); reply by M * * * (Paper No. 42).
(2) Under 37 CFR 1.633(b) and (c) to redefine the interfering subject matter by substituting a count and amending the M * * * claims corresponding to the count. Motion filed April 15, 1986 (Paper No. 17); opposition by V * * * (Paper No. 31); reply by M * * * (Paper No. 43).
(3) Under 37 CFR 1.633(a) for judgment on the ground that V * * *'s claims 1, 6, 8 and 11-16 are not patentable to V * * * under 35 USC 102 or 103. Motion filed April 15, 1986 (Paper No. 18); opposition by V * * * (Paper No. 22); reply by M * * * (Paper No. 44).
(4) Under 37 CFR 1.635 for return of unauthorized paper pursuant to 37 CFR 1.638. Motion filed June 3, 1986 (Paper No. 47).
(5) Under 37 CFR 1.635 for return of unauthorized papers. Motion filed September 11, 1986 (Paper No. 59); opposition by V * * * (paper No. 63); reply by M * * * (Paper No. 64).
Motion (B)(3)
*2 The motion for judgment is granted for the reasons set forth by M * * * in support thereof and in their reply to the V * * * opposition. V * * *'s arguments in opposition are not persuasive. The argument by V * * * that no motivation is provided for eliminating the acid utilized by the reference is of no consequence in evaluating the patentability of V * * *'s claims, which do not require the elimination of acid, as noted by M * * * in their reply. The V * * * declaration is also unpersuasive for the reasons which M * * * have adequately set forth in their reply. The declaration submitted by M * * * with their reply has been considered by the undersigned in the course of reaching a decision on this motion.
Motion (A)(6)
The motion is denied. The motion for non-consideration of the M * * * declaration and parts of the reply is considered to be a motion pursuant to 37 CFR 1.635, which relates to all matters other than those specified in 37 CFR 1.633 or 1.634. Since motions under 37 CFR 1.635 are required to contain a certificate pursuant to 37 CFR 1.637(b) and V * * * has not complied with § 1.637(b), the motion is dismissible (or deniable) on that basis alone. The motion is also denied on the merits. The basis of the motion, i.e., that proof of a material fact may not be filed with a reply, is wrong. As noted by M * * * in their reply, the rule (37 CFR 1.639(a)) expressly provides for the presentation of proof of a material fact alleged in a reply to be filed with the reply. V * * * does not allege that the reply is not directed solely to new points raised in the opposition, and the undersigned finds that the reply is directed to new points of argument raised in the opposition as is required by 37 CFR 1.638(b).
Motion (A)(3)
The motion is denied for the reasons set forth by M * * * in their opposition. The undersigned agrees with M * * * that the proposed contingent amendment provides no basis for patentability of the V * * * claims.
Motion (A)(4)
The motion to take the testimony of examiners is denied for the reasons set forth by M * * * in their opposition. The undersigned agrees with M * * * that the citation by V * * * of J.P. Stevens v. Lex-Tex Ltd., 223 USPQ 1089 (Fed.Cir.1984) is inapposite because it relates to inequitable conduct, and no such issue has been raised by M * * * in this case. Thus, any such testimony would be irrelevant.
Motions (A)(1), (A)(2), (A)(5), (B)(1) and (B)(2)
In view of the decision, supra, that all the V * * * claims are unpatentable to V * * * motions (A)(1), (A)(2), (A)(5), (B)(1) and (B)(2) are dismissed as moot. Patentability is a threshold question which is determinative of whether an interference exists. Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976).
Motion (B)(4)
*3 The request for return of unauthorized paper is granted for the reasons set forth by M * * * in support thereof. In the circumstances presented here, the failure of V * * * to oppose the request is considered a tacit agreement that the paper should be returned. Accordingly, the V * * * opposition to motion (B)(1), i.e., Paper No. 30, and M * * * Appendices A and B to this motion (Paper No. 47) are being returned herewith. [FN1]
Motions (B)(5)
The motion is denied. The motion is defective in that it does not comply with 37 CFR 1.637(b). The undersigned agrees with M * * * that the supplemental paper filed by V is belated to the extent that it seeks to supplement an opposition filed months earlier with no showing of sufficient cause to excuse the belatedness as required by 37 CFR 1.645(b). Accordingly, the supplemental paper has been given no consideration. The undersigned disagrees with the M * * * contention that 37 CFR 1.618(a) mandates the return of the papers, notwithstanding the words "shall return". The comments to the new rules at 49 Fed.Reg. 48423, December 12, 1984, 1050 O.G. 385, January 29, 1985, make it clear that the purpose of § 1.618(a) is to give the EIC the "authority" to return papers in appropriate circumstances, and not to mandate the return of papers at the insistence of a party any time a rule is not fully complied with. Cf. Black's Law Dictionary, Revised Fourth Edition, 1968, which indicates that while the word "shall" is generally imperative or mandatory, as against the government it is to be construed as "may", unless a contrary intention is manifest.
Order to Show Cause
Pursuant to 37 CFR 1.640(d)(1), V * * * is notified that judgment will be rendered against him unless he shall, within 20 days from the date of the order, show cause why such action should not be taken. Should V * * * elect to attempt to show cause why judgment should not be rendered against him, his attention is directed to the attached notice from the Deputy Commissioner, 1074 O.G. 4.
FN1. Although the motion did not comply with 37 CFR 1.637(b), the PTO has authority to return unauthorized papers in the absence of a proper motion. 37 CFR 1.618(a).
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