Board of Patent Appeals and Interferences

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

 

*1 NABIAL ET AL.

v.

MAY

Patent Interference No. 101,468

October 30, 1986

 

Before Torchin, R. Smith and Sofocleous

 

 

Examiners-in-Chief

 

 

R. Smith

 

 

Examiner-in-Chief

 

 

Reconsideration

 

 On October 20, 1986 May filed a request for reconsideration of the Decision on Motions regarding the action taken by the Examiner-in-Chief (EIC) with respect to the Nabial et al. motion under 37 CFR 1.633(a). Specifically, the EIC found that testimony was needed to decide the motion and therefore deferred decision on the motion until final hearing. The EIC also indicated that an order authorizing the taking of testimony would be entered in due course.

 

 

 May's request for reconsideration was filed pursuant to 37 CFR 1.640(c), which requires that the request shall specify the points believed to have been misapprehended or overlooked in rendering the decision. We have carefully reviewed May's request for reconsideration, but we are not persuaded that the EIC misapprehended or overlooked any points in rendering his decision. Accordingly, the request for reconsideration is denied.

 

 

 May contends that the EIC's decision to allow the presentation of further evidence is in error because:

   (1) Nabial et al. have made no prima facie case of prior use or sale and

   (2) Nabial et al. have not indicated that further evidence is either available or necessary.

 

 

 As to point (1), May cites no authority in the rules governing interference contests, i.e., 37 CFR 1.601 et seq., but rather urges that the Nabial et al. motion 'can be analogized' to a public use proceeding under 37 CFR 1.292 and that a hearing is held only if a prima facie case of public use is set forth by petition. We know of no authority requiring that a motion in an interference under 37 CFR 1.633(a) must meet the requirements of the rule relating to public use proceedings (37 CFR 1.292), and May has pointed to no such authority. To the contrary, interference proceedings are 'governed' by the rules set forth in 'Subpart E--Interferences', 37 CFR 1.601 et seq., as note the language in § 1.601:

   This subpart governs the procedure in patent interferences in the Patent and Trademark Office.

 

 

 Specifically, the requirements for a motion under 37 CFR 1.633(a) are set forth in § 1.637(a) Contents of a Motion as follows:

   (a) Every motion shall include (1) a statement of the precise relief requested, (2) a statement of the material facts in support of the motion, and (3) a full statement of the reasons why the relief requested should be granted.

May does not contend that the Nabial et al. motion failed to meet the requirements of § 1.637(a); indeed, May does not address the requirements of § 1.637(a). In our view if a motion does not meet the requirements of § 1.637(a), the motion may be dismissed, and the movant would not be entitled to raise the issue at final hearing. However, where the motion meets the requirements of § 1.637(a), the movant has met his burden of going forward on that issue, is therefore entitled to a final hearing on the issue and is entitled to present testimony on that issue. In our view the Nabial et al. motion is in good faith compliance with § 1.637(a).

 

 

  *2 As to point (2), it is May's position that the EIC may not sua sponte issue an order authorizing a testimony period, but rather may only authorize the taking of testimony in response to an indication by a party that testimony is necessary pursuant to § 1.639(c). Further, May urges that, since Rule 1.639(a) states that 'Proof of any material fact alleged in a motion . . . must be filed and served with the motion . . .', the presentation of any additional evidence by Nabial et al. is 'contrary to the rules.' Thus, May concludes that the pending motion should be decided without testimony by Nabial et al. May contends that his interpretation of Rule 639 is supported by D. Mexic, 'Preliminary Motions' Comprehensive Interference Practice 1985, Chapter 5 (Patent Resources Group 1985).

 

 

 We disagree with all of the noted contentions by May, which in our view are based on a misunderstanding of the new interference rules (35 USC 1.601 et seq.). The fact that the Rule 1.639(a) states that proof must be filed with the motion does not mean that a party is necessarily precluded from presenting any evidence which was not filed with that party's preliminary motion under 37 CFR 1.633(a). As noted by Mexic in his scholarly article on preliminary motions:

   While the latter rule is mandatory, there are no specific provisions covering the consequences of a failure to comply with § 1.639(a) (emphasis added).

 

 

 Rule 1.610(a) authorizes the EIC to determine a proper course of conduct in an interference for any situation not specifically covered by this part. Further, pursuant to § 1.640(b) an EIC may grant or deny any motion or take such other action which will secure the just, speedy and inexpensive determination of the interference. In our view these rules provide ample authority for the EIC to defer the motion to final hearing and to authorize a testimony period on the issue raised by the motion where in his judgment that is the action which will secure the just, speedy and inexpensive determination of the interference and the motion meets the requirements of § 1.637.

 

 

 In the circumstances here, Nabial et al. presented certain evidence in support of their preliminary motion for judgment that May's involved claims are unpatentable under 35 USC 102(b). The EIC found the evidence sufficient to meet the burden of going forward on the patentability issue, but insufficient to present a prima facie case of unpatentability. Thus, the EIC deferred the motion to final hearing and authorized the presentation of additional evidence on the issue. If Nabial et al. have further evidence to present on the indicated issue and they choose to present such evidence, the consequence of their failure to present all such evidence with their preliminary motion pursuant to § 1.639 is that the preliminary motion was not granted and Nabial et al. retain the burden of proof on the issue at final hearing. If Nabial et al. had presented sufficient proof to establish the unpatentability of May's involved claims, the EIC might have granted the motion. In that event an order to show cause (OC) would have been issued against May, and if May in his response to the OC requested a final hearing on the issue, the burden of proof would be on May at final hearing.

 

 

  *3 May appears to misapprehend the nature of interference practice under the new rules. Even if the Nabial et al. motion had been decided by the EIC adversely to Nabial et al., i.e., denied, that would not result in an immediate judgment ending the interference as May appears to believe; rather, an OC would be issued pursuant to 37 CFR 1.640(d) ordering Nabial et al. to show cause why judgment should not be entered against Nabial et al. In response to the OC, Nabial et al. could request a final hearing on the issue raised in their motion and could request a testimony period pursuant to 37 CFR 1.640(e) with respect to the issue raised in their motion. Since Nabial et al. have properly raised the issue of the patentability of May's involved claims under 35 USC 102(b) in their preliminary motion, they are entitled to raise that issue at final hearing pursuant to 37 CFR 1.655. Moreover, the EIC's action in authorizing a testimony period reflects the EIC's view that Nabial et al. have complied with § 1.637(a) and have met their burden of going forward on that issue. We find no error in the EIC's view that in the circumstances here, where an issue is properly raised in a manner which meets the burden of going forward on the issue, there is good cause to authorize a testimony period on that issue. We emphasize that there is nothing in the rules to preclude a party from proffering evidence at final hearing which may include or go beyond that which was submitted during the motion period. See 37 CFR 1.671 for an indication of the evidence which is properly admissible at final hearing.

 

 

BOARD OF PATENT APPEALS AND INTERFERENCES

 

 

Norman G. Torchin

 

 

Examiner-in-Chief

 

 

Ronald H. Smith

 

 

Examiner-in-Chief

 

 

Michael Sofocleous

 

 

Examiner-in-Chief

 

<< Return to Board of Patent Appeals and Interferences Index