Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 BEHR ET AL.
v.
TALBOTT ET AL.
Patent Interference No. 102,366
July 1, 1992
Final Hearing March 10, 1992
Tube Spreader For Removing Wrinkles In Tube Stock
Application of R. Douglas Behr and Larry M. Zieke filed March 20, 1989. Accorded benefit of U.S. Serial No. 07/129,504, filed December 7, 1987, now Patent No. 4,829,745, issued May 16, 1989.
Patent granted to Ronnie D. Talbott, Thomas Tedeschi, Jr., Michael P. Hughes and Orlo E. Gard, Jr. on February 24, 1987, Patent No. 4,745,731, filed May 24, 1988, Serial No. 07/017,512.
Keith V. Rockey, Timothy W. Hagan, Richard A. Killworth, Lloyd E. Hessenaur, Jr., Bruce M. Kanuch and Richard G. Waterman for Behr et al. Oral Argument by Keith V. Rockey
Sam D. Walker, Thomas R. Savoie, Daniel J. Donovan and Stephen D. Murphy for Talbott et al. Oral Argument by Frank S. DiGiglio
Before Calvert
Vice Chairman
Boler, R. Smith, McCandlish and Martin
Examiners-in-Chief [FN1]
Martin
Examiner-in-Chief
The subject matter of this interference is a method of forming a continuous sheet of film material having mating flexible closure strips on its opposite edges into flexible pouches which are filled with a product and have mated closure strips that permit the pouch to be opened and resealed. The involved Talbott et al. patent is owned by General Foods Corporation and the involved Behr et al. application by Dow Chemical Company.
Count 1, the sole count, reads as follows:
A form, fill, and seal method for forming film material into flexible pouches, filling the pouches with product and sealing the pouches, wherein the method comprises:
providing a continuous web of film material having mating flexible closure strips longitudinally positioned at generally opposing locations along said continuous web of film material, said mating flexible closure strips having generally complementary interlocking means for selectively engaging and disengaging said strips from each other;
guiding the mating flexible strips together by means of a pair of pinch rollers positioned a substantial distance downstream from a forming collar so that the film material can accommodate movement of the mating flexible closure strips into alignment with each other until their respective interlocking profile [sic, profiles] interlock;
engaging said mating flexible strips together to form a flow of continuous joined web of film material having mated flexible closure strips;
thereafter spreading said flow of continuous joined web of film material to modify its cross-sectional configuration by increasing a longitudinal dimension of its cross-section, said web spreading step including guiding said mated flexible closure strips; and
sealing and severing said joined web at a location downstream of the location of said spreading step in order to complete formation of pouches from said joined web.
When this interference was declared, Behr et al. claims 1 and 3-13 and Talbott et al. claims 1-6, 9, 13, 19-21 and 24 were designated as corresponding to the count, which, except for using the term "profile" instead of "profiles," is identical to Behr et al. claim 10 and Talbott et al. claim 19. Of the Behr et al. claims designated as corresponding to the count, claims 1 and 3 are indicated as "not allowable" in the initial interference memorandum (PTO 850) prepared by the ex parte examiner.
*2 In a Decision on Preliminary Motions (paper No. 39), the Examiner-in-Chief (EIC) dealt with the parties' preliminary motions as follows:
(1) A decision on a Behr et al. motion under 37 CFR 1.634 to correct the inventorship by adding William H. Borough was deferred until final hearing.
(2) In a motion under 37 CFR 1.633(c), Behr et al. sought to redefine the interference by substituting a proposed count A for existing count 1 and designating as corresponding thereto all of the parties' claims which were designated as corresponding to count 1. [FN2] Proposed count A differs from count 1 by omitting the following limitation: "said web spreading step including guiding said mated flexible closure strips." The EIC denied this motion on two alternative grounds, the first being that Behr et al. did not identify any prior art demonstrating that the omitted limitation is without patentable significance. The second ground is that the involved Behr et al. application does not provide written description support for the limitation which defines the position of the pinch rollers relative to the forming collar, which limitation appears in proposed count A and count 1:
guiding the mating flexible strips together by means of a pair of pinch rollers positioned a substantial distance downstream from a forming collar so that the film material can accommodate movement of the mating flexible closure strips into alignment with each other until their respective interlocking profile [sic] interlock; ...
(3) A Talbott et al. motion under 37 CFR 1.633(c)(4) to designate their claims 9, 23 and 24 as not corresponding to the count was granted only as to claim 24, the EIC concluding that the subject matter of claims 9 and 23 would have been obvious from the subject matter of count 1 considered with Wenger U.S. Patent No. 4,235,064. The interference was accordingly redeclared to designate Behr et al. claims 1 and 3-13 and Talbott et al. claims 1-6, 9, 13, 19-21 and 23 as corresponding to the count.
(4) A Talbott et al. motion under 37 CFR 1.633(a) for judgment against Behr et al. under 35 U.S.C. § 102(b) on the ground of public use was deferred until final hearing.
(5) A Talbott et al. motion under 37 CFR 1.633(g) to deny Behr et al. the benefit of their parent application Serial No. 07/129,504 was construed by the EIC as including two separate motions: [FN3] (i) a motion under 37 CFR 1.633(g) to deny Behr et al. benefit of their parent application on the ground that it fails to satisfy the count limitation that defines the position of the pinch rollers relative to the forming collar; and (ii) a motion under 37 CFR 1.633(a) for judgment against Behr et al. claims 4-13 on the ground that their involved application, which is a continuation of their parent application, fails to provide written description support (35 U.S.C. § 112, first paragraph) for the claim limitations that define the position of the pinch rollers relative to the forming collar.
*3 The Decision on Preliminary Motions concluded with an order to show cause under 37 CFR 1.640(d)(1) requiring Behr et al. to show cause why judgment should not be entered against them on the ground that all of their claims corresponding to the count (i.e., claims 1 and 3-13) are unpatentable. In support of the order, the EIC noted his granting of the Talbott et al. motion for judgment against Behr et al. claims 4-13 as well as the ex parte examiner's indication in the initial interference memorandum that Behr et al. claims 1 and 3 are "not allowable."
Behr et al. responded to the show cause order by requesting a final hearing to review (a) the denial of their motion to redefine the interference by substituting proposed count A for count 1, (b) the granting of Talbott et al.'s combined motions for judgment and to deny benefit, and (c) the factual and legal basis for Behr et al.'s motion to add Burroughs as a coinventor. The request for final hearing was granted as to (a) and (b) but was denied as to (c) on the ground that consideration of this issue had been deferred until final hearing.
Behr et al. also moved under 37 CFR 1.635 for a testimony period on the matter of derivation by Talbott et al. from Behr et al., which motion was denied on the grounds that derivation by a party was not and cannot be raised in a preliminary motion and has nothing to do with the reason Behr et al. were placed under a show cause order.
Both parties filed briefs and were represented at final hearing. Page numbers of the Behr et al. opening brief are hereinafter preceded by "BB", pages of the Talbott et al. brief by "TB" and pages of the Behr et al. reply brief by "RB". The numbers of the Behr et al. and Talbott et al. exhibits, which are appended to the opening briefs, are preceded hereinafter by "BX" and "TX", respectively. Neither party relies on any affidavits or deposition testimony.
DECISION
A. Behr et al. claims 1 and 3
At the outset, we note that Behr et al. have not responded to the show cause order to the extent it is based on the unpatentability of their claims 1 and 3. Accordingly, judgment will be issued against Behr et al. as to these claims at such time as a judgment is entered terminating this interference.
B. Count and claim interpretation
Absent any ambiguity, counts are to be given the broadest reasonable interpretation which they can reasonably support. Lamont v. Berguer, 7 USPQ2d 1580, 1582 (BPAI 1988); Fontijn v. Okamoto, 518 F.2d 610, 618, 186 USPQ 97, 104 (CCPA 1975). See also DeGeorge v. Bernier, 768 F.2d 1318, 1321, 226 USPQ 758, 760-61 (Fed.Cir.1985):
Interference counts are given the broadest reasonable interpretation possible, and resort to the specification is necessary only when there are ambiguities inherent in the claim language or obvious from arguments of counsel. See, e.g., Woods v. Tsuchiya, 754 F.2d 1571, 1578, 225 USPQ 11, 15 (Fed.Cir.1985) [cert. denied 474 U.S. 825, 106 S.Ct. 81 (1985) ]; In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981); Kroekel v. Shah, 558 F.2d 29, 32, 194 USPQ 544, 546 (CCPA 1977); Stansbury v. Bond, 482 F.2d 968, 974-75, 179 USPQ 88, 92 (CCPA 1973). If there is such ambiguity, resort must be had to the specification of the patent from which the copied claim came. See, e.g., Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984); Sockman v. Switzer, 379 F.2d 996, 1000, 154 USPQ 105, 106-07 (CCPA 1967). [Footnote omitted.]
*4 Since neither party has alleged that, let alone explained why, the count is ambiguous, it will be given the broadest reasonable interpretation without resort to the Talbott et al. patent disclosure, from which the language of the count originated.
On the other hand, application claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count are given the broadest reasonable interpretation consistent with the corresponding disclosure, as in ex parte proceedings. See In re Zletz, 893 F.2d 319, 13 USPQ2d 1320, 1322 (Fed.Cir.1989):
During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the application is granted, there is no reason to read into the claim the limitations of the specification). The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed.Cir.1987); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.1984). The issued claims are the measure of the protected right. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing General Electric Corp. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69 (1938)).
This rule of claim construction also applies to patent claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count. See Lamont v. Berguer, 7 USPQ2d at 1582 (the presumption of validity under 35 U.S.C. § 282 does not apply to patent claims involved in an interference). Moreover, giving involved patent claims the broadest reasonable construction is consistent with the fact that the patentee can move under 37 CFR 1.633(h) [FN4] to add a reissue application for the involved patent; reissue application claims are given the broadest reasonable interpretation consistent with the disclosure. In re Reuter, 651 F.2d 751, 756, 210 USPQ 249, 253-54 (CCPA 1981). Construing involved patent claims in this manner is also consistent with the fact that original claims of an unexpired patent under reexamination are given the broadest reasonable construction consistent with the disclosure on the ground that the patentee can amend the patent claims during reexamination. In re Yamamoto, 740 F.2d at 1571, 222 USPQ at 936; Ex parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986).
*5 The sixth paragraph of 35 U.S.C. § 112, which limits claimed means and steps to the corresponding disclosed elements and acts and equivalents thereof, is inapplicable to claims before the PTO. See the Commissioner's December 13, 1991, notice, Applicability of the last paragraph of 35 U.S.C. § 112 to patentability determinations before the Patent and Trademark Office, 1135 O.G. 8 (Feb. 4, 1992).
C. Burden of proof with respect to motions brought under the new interference rules
With respect to all motions brought under the new interference rules (37 CFR 1.601 et seq.), the moving party bears the burden of making out a prima facie case of entitlement to the relief sought. That the burden is always on the moving party under the new rules is believed to be evident from the requirement that every motion include a statement of the material facts relied on in support of the motion [FN5] and the requirement that these facts be established by proof [FN6] in the form of patents, printed publications or affidavits. [FN7] Alternatively, in the case of a preliminary motion under 37 CFR 1.633 or a motion under 37 CFR 1.634 to correct inventorship, the proof may take the form of testimony to establish the facts relied on. [FN8] In contrast, 37 CFR 1.231(b) of the old interference rules (37 CFR 1.201 et seq.) merely required that each motion "contain a full statement of the grounds therefor and reasoning in support thereof." If the opponent presents evidence in opposition to the motion, all of the evidence submitted with the motion, opposition and reply must be evaluated in order to determine whether the moving party has met its burden of persuasion.
For the foregoing reasons, a party moving under 37 CFR 1.633(a) for judgment on the ground that an opponent's claims corresponding to the count are unpatentable to the opponent always bears the burden of proof, regardless of the specific ground alleged for unpatentability.
With respect to motions under 1.633(a) for judgment on the ground that an opponent's claims corresponding to the count lack of written description support in its involved application, this is admittedly a departure from the practice under the old interference rules, wherein the burden as to a party's "right to make" a count was always on the copier of claims. [FN9] See, e.g., Martin v. Mayer, 823 F.2d 500, 503, 3 USPQ2d 1333, 1335 (Fed.Cir.1987) ("It is Mayer, the copier of claims from Martin's patent, who has the burden of proving, by clear and convincing evidence, that 'the disclosure on which he relies supports the copied claims which became the interference counts' "). [FN10] However, as noted in Heymes v. Takaya, 6 USPQ2d 2055, 2056 (BPAI 1988), the new interference rules do not require an applicant to copy a patent claim, either exactly or minus only immaterial limitations, in order to provoke an interference with a patent. Nor is it generally necessary for an examiner to suggest a claim for copying in order to provoke an interference between applications. The reason is that an interference can be declared under the new rules if an application includes, or is amended to include, at least one patentable claim which is drawn to the same patentable invention as a claim of another's unexpired patent, 37 CFR 1.606, or is drawn to the same patentable invention as a claim of another's application, 37 CFR 1.603, provided of course that co-ownership is not present. 37 CFR 1.602. Since it is no longer necessary to copy claims to provoke an interference, the "old rule" "right to make" decisions, to the extent they put the burden of proof on the non-moving party (i.e., the copier of claims), are inapplicable to a 37 CFR 1.633(a) motion alleging lack of written description support.
*6 For the same reason, the "old rule" decisions concerning the burden of proof as to benefit of an earlier application are inapplicable to motions brought under 37 CFR 1.633(g) to attack the benefit accorded an opponent of an earlier application. These "old rule" decisions placed the burden of proof on the party claiming benefit, regardless of whether the party was senior or junior, an applicant or patentee, trying to obtain benefit or defending an attack on its benefit. [FN11] All of the above-cited decisions are based directly or indirectly on Wagoner v. Barger, 463 F.2d 1377, 1380, 175 USPQ 85, 87 (CCPA 1972):
[T]he burden of proving that language contained in the parent application is the legal equivalent of the language contained in the claims of the later application is on the party asserting the equivalency, regardless of whether he is the junior or senior party in the interference, Crome v. Morrogh, 44 CCPA 704, 708, 239 F.2d 390, 392 [sic, 391], 112 USPQ 49, 51 [sic, 50] (CCPA 1956), and the burden is a heavy one."
However, Crome, rather than being a benefit case, is a "right to make" case which, like the other "right to make" cases, placed the burden of proof on the copier: "Crome, having copied the claims in issue from Morrogh's patent, has the burden of showing a clear basis for them in the disclosure of his [involved] application." Id.
Likewise, Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984), which placed the burden on Carmichael to show support for the count in his grandparent application, cites in support Snitzer v. Etzel, 531 F.2d 1062, 1063, 189 USPQ 415, 417 (CCPA 1976), which is also a "right to make" case putting the burden on the copier. Although Guyer v. Cramer, 318 F.2d 757, 138 USPQ 125 (CCPA 1963), which does not rely on Crome or Snitzer, has also been cited [FN12] as support for putting the burden of proof on the party claiming benefit, Guyer does not specifically address the matter of who has the burden of proof. [FN13]
Thus, the "old rule" decisions which explain why the burden of proof is on the party claiming benefit appear to be based on the need to copy claims under the old rules. Consequently, to the extent these decisions put the burden of proof on the non-moving party (i.e., the party defending an attack on its benefit), these decisions are inapplicable to a 37 CFR 1.633(g) motion attacking benefit.
As Talbott et al. correctly note (TB 20), Alsenz v. Hargraves, 13 USPQ2d 1371, 1375 (BPAI 1989), which involves an interference under the new rules, follows the old practice by putting the burden of proof on Alsenz with respect to Hargraves' motion to deny Alsenz the benefit of his parent application. To the extent Alsenz puts the burden of proof on the non-moving (i.e., defending) party, it is hereby overruled. In view of Talbott et al.'s reliance on Alsenz, this interference is being remanded to the EIC with instructions to permit them to refile their 37 CFR 1.633(a) and 1.633(g) motions [FN14] in accordance with the requisite burden of proof, with time for oppositions and replies also to be provided. For the reasons given below, the motions as originally filed do not satisfy this burden.
*7 The amount of evidence required to prevail on a motion under 37 CFR 1.633(a) for judgment on the ground of unpatentability is a preponderance of the evidence, [FN15] unless the basis for the alleged unpatentability is fraud or inequitable conduct, in which case clear and convincing evidence is required. [FN16]
D. The Talbott et al. motion for judgment on the ground that Behr et al. claims 4-13 lack written description support in their involved application
The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed, including the original drawings, would reasonably have conveyed to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir.1991); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.Cir.1983). The subject matter of the claim need not be described identically or literally for the application to satisfy the written description requirement. Kennecott Corp. v. Kyocera Int'l Inc., 835 F.2d 1419, 1422, 5 USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 108 S.Ct. 1735 (1988); In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984). An application need not describe the claim limitations in greater detail than the invention warrants; it is only necessary that the description be sufficiently clear that persons skilled in the art would have recognized that the applicant made the invention having those limitations. Martin v. Mayer, 823 F.2d at 505, 3 USPQ2d at 1337, citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). However, "[t]he issue is not ... whether one following applicant's specification would necessarily 'produce' or select the particular combination of the counts for his own use. Rather, it is whether he would necessarily recognize that such a combination was disclosed as a construction which might be selected if desired." Byrne v. Trifillis, 442 F.2d 1390, 170 USPQ 32, 34 (CCPA 1971). See also Binstead v. Littmann, 242 F.2d at 770, 113 USPQ at 283 (disclosed optional modification sufficient to satisfy written description requirement); Heymes v. Takaya, 6 USPQ2d 1448, 1453 (BPAI 1988), recon. denied, 6 USPQ2d 2055, 2056 (BPAI 1988); Nelson v. Bowler, 1 USPQ2d 2076, 2079 (BPAI 1986).
*8 It is not necessary for the application to reveal a conscious appreciation on the part of the applicants of the significance of the limitation in question, as Talbott et al. suggest when they argue (TB 25) that there is "a fundamental lack of appreciation on the part of Behr [et al.] of the concept of 'distance downstream' as a controlling parameter of the invention." Compare Vas-Cath, 935 F.2d at 1565, 19 USPQ2d at 1116 ("drawings alone may provide a 'written description' of an invention as required by § 112").
The written description requirement can be satisfied by showing that the disclosed subject matter, when given its "necessary and only reasonable construction," inherently (i.e., necessarily) satisfies the limitation in question. Kennecott v. Kyocera, 835 F.2d at 1423, 5 USPQ2d at 1198 ("It was conceded that anyone with a microscope would see the [equiaxed] microstructure of the product of the '954 application"); Snitzer v. Etzel, 531 F.2d at 1076, 189 USPQ at 419; Wagoner v. Barger, 463 F.2d at 1380, 175 USPQ at 86- 87; Binstead v. Littmann, 242 F.2d at 770, 113 USPQ at 281-82.
Consequently, a party moving under 37 CFR 1.633(a) for judgment on the ground that an opponent's claims corresponding to the count lack written description support in its involved application has the burden of submitting with the motion proof which prima facie establishes that the limitation in question lacks either express or inherent support in the involved application. Mere attorney argument will not suffice. Meitzner v. Mindick, 549 F.2d 775, 193 USPQ 17, 22 (CCPA), cert. denied, 434 U.S. 854, 195 USPQ 465 (1977) ( "the argument that the Mindick parent application does not disclose 'true porosity' is unsupported by evidence. Argument of counsel cannot take the place of evidence lacking in the record"). The burden of proof on an interference party to show a lack of inherency is thus greater than the burden on an ex parte examiner to show inherency in the prior art, which can be met merely by providing a basis in fact and/or technical reasoning which reasonably supports the position that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) and the cases cited therein. The reason the ex parte examiner has a lower burden of proof on the issue of inherency than does an interference party is that unlike a party, the PTO lacks the resources to acquire, manufacture or test products. In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed.Cir.1986); In re Best, 562 F.2d 1252, 195 USPQ 430, 433-34 (CCPA 1977); In re Brown, 459 F.2d 531, 173 USPQ 685, 688 (CCPA 1972).
*9 Talbott et al. argue that the Behr et al. involved application fails to provide written description support for the limitations in Behr et al. claims 4-13 that define the position of the pair of pinch rollers relative to the forming collar. Claims 4, 9, 10 and 13 are independent claims, of which claim 10 is identical to the count except for using the term "profiles" instead of "profile." The limitation in question reads as follows in claim 10:
... a pair of pinch rollers positioned a substantial distance downstream from a forming collar so that the film material can accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock.
Claim 4 includes identical language. Construing this limitation as a whole and taking into account the causation indicated by the "so that" recitation, we believe the term "substantial distance downstream from a forming collar," when given its broadest reasonable interpretation, means a distance downstream from the forming collar which is sufficient to enable "the film material [to] accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock."
Claims 9 and 13 use similar language to define the position of the pair of pinch rollers but omit the requirement that they be "a substantial distance downstream from a forming collar":
a pair of pinch rollers positioned so that the film material can accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock.
As a result, this limitation is broad enough to read on pinch rollers which are not located downstream from the forming collar but which nevertheless are able to perform the claimed function.
Since claims 9 and 13 recite the limitation in question in the broadest terms, the first question to answer is whether Talbott et al. have met their burden of proof with respect to these claims, i.e., whether Talbott et al. have made out a prima facie case that the involved Behr et al. application as filed fails to provide either express or inherent support for positioning the pinch rollers, either downstream or elsewhere, such that they will allow the film material to accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock. The answer to this question is clearly no, since Talbott et al. have not even addressed the limitation broadly recited in claims 9 and 13. Rather that discussing the language of the Behr et al. claims, which are the subject of a 37 CFR 1.633(a) motion for judgment, Talbott et al. discussed only the corresponding limitation in the count, which, like claims 4 and 10, includes the additional "downstream" limitation. Thus, Talbott et al. have not met their burden of proof with respect to claims 9 and 13. [FN17]
*10 Turning now to claims 4 and 10, the question is whether Talbott et al. have made out a prima facie case that the Behr et al. disclosure fails to provide either express or inherent support for positioning the pinch rollers downstream from the forming collar by a distance that is sufficient to allow the film material to accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock. For the following reasons, Talbott et al. also failed to meet their burden of proof with respect to these claims.
Although the Behr et al. drawings do not show a forming collar, the specification at page 7, lines 4-7, indicates that a forming collar is part of the disclosed apparatus:
From the roll 12, the web 14 is drawn over a forming collar (not shown) by a feed mechanism (not shown) which is located downstream in the path of travel of the web....
It is also clear that the press rolls of mechanism 28 function to bring the mating flexible strips into alignment with each other until their respective interlocking profiles interlock (page 7, lines 17-33) (emphasis added):
Once it has passed over forming collar (not shown), the web travels generally vertically downwardly. A steering, joining, and closing mechanism 28 for pressing together and interlocking the rib and groove elements 15, 15' of opposed plies 18, 19 is disposed in the path of travel of web 14 as the web passes around tubular filing [sic] chute 24. The steering, joining, and closing mechanism 28 serves to secure the opposing plies together to form a tubular web which is then filled as described in greater detail below. Details of the operation of mechanism 28 are set forth in commonly assigned [Zieke et al.] U.S. Patent No. 4,727,709. Generally, mechanism 28 includes a pair of opposing press rolls which are at an angle to the direction of travel of web 14. This tends to pull the opposing plies 18, 19 taut against filling chute 24 and bring the interlocking closure elements 15, 15' into proper alignment for securing them together.
However, the application does not expressly state that the press rolls are positioned downstream from the forming collar, let alone by a distance sufficient to ensure that the film material can accommodate movement of the mating flexible strips into alignment. Nor does the Zieke et al. patent (TX 5) shed any light on this matter, since it does not disclose a forming collar.
In view of the above, Talbott et al. could have met their burden of proof by providing evidence demonstrating that an artisan giving the Behr et al. disclosure its necessary and only reasonable construction would not have understood it to mean that the pinch rollers are to be positioned downstream from the forming collar. In the absence of convincing evidence of this type, and bearing in mind that the burden of proof is on Talbott et al., it must be assumed that the artisan would have understood that the pinch rollers are to be positioned downstream from the forming collar. Under these circumstances, Talbott et al. would have to show that the pinch rollers will not inherently (i.e., necessarily) permit the film material to accommodate movement of the mating flexible strips into alignment with each other until their respective interlocking profiles interlock. This requires evidence showing that the pinch rollers require a minimum downstream distance in order to be able to perform this function coupled with evidence showing that the artisan would not necessarily have employed a downstream distance equal to or greater than this minimum distance. Since Talbott et al. did not provide evidence of the foregoing type, they failed to meet their burden of proof with respect to independent claims 4 and 10 and dependent claims 5-8, 11 and 12.
*11 Talbott et al.'s argument (TB 26) that the Zieke et al. "press rolls" are not "pinch rollers," as required by the Behr et al. claims (and the count), is unpersuasive. In support, Talbott et al. argue that a comparison of the Zieke et al. press rolls with the rollers in Figs. 2 and 3 of their involved patent show that they are not the same and do not perform in the same manner. [FN18] In addition, they argue that whereas the axes of the Zieke et al. press rolls are offset from a line perpendicular to the direction of travel of the sheet by an angle between 2 degrees and 30 degrees (col. 5, lines 34-46), "the Talbott invention contemplates an angle of 45 degrees" (TB 27) original emphasis). [FN19] Even though the parties' disclosures differ in some respects, these differences cannot be relied on to interpret the claims, because, as already explained, the claims (and the count) are to be given the broadest reasonable interpretation without resort to the parties' disclosures. Talbott et al. have pointed to nothing in the language of the Behr et al. claims that precludes the term "pinch rollers" from being read on press rolls of the type disclosed by Behr et al. and Zieke et al.
E. Talbott et al. motion to deny Behr et al. benefit of their parent application
Since the count (except for using the term "profile" instead of "profiles") is identical to Behr et al. claim 10 and the disclosure of the Behr et al. parent application is identical to the disclosure of their involved application, Talbott et al. failed to meet their burden of proof under 37 CFR 1.633(g) for the reasons already discussed above.
F. Behr et al. motion to substitute proposed count A for existing count 1
The EIC denied the Behr et al. motion to substitute proposed count A for count 1 on two alternative grounds, the first being that the Behr et al. involved application does not provide written description support for the limitation defining the position of the pinch rollers relative to the forming collar. Since the rules do not require a moving party to show written description support for a count, [FN20] we assume the EIC means that Behr et al. have not satisfied 37 CFR 1.637(c)(1)(ii), which puts the burden on a moving party applicant to show the patentability of its claims to be designated as corresponding to a proposed count. However, we do not believe this requirement should be construed as requiring an applicant to demonstrate written description support for claims that have already been designated as corresponding to a count in the notice declaring the interference, such as Behr et al. claims 4-13. Nor should an applicant be required to demonstrate written description support for an element in a proposed new claim which also appears in a claim that has been designated as corresponding to a count, such as the limitation at issue in Behr et al. proposed new claim 14. Since, for the foregoing reasons, Behr et al. were not required by 37 CFR 1.637(c)(1)(ii) to show written description support for the limitation in question in their claims 3-14, the EIC erred in denying the motion to substitute for lack of such support.
*12 The second ground the EIC gave for denying the motion to substitute is that Behr et al. did not identify any prior art demonstrating that the limitation omitted from count 1 by the proposed count ("said web spreading step including guiding said mated flexible closure strips") is of no patentable significance. Since the new interference rules do not require a party to establish the immateriality of a limitation in support of a motion to substitute a new count, [FN21] we understand the EIC's position to be that Behr et al. failed to show that the proposed substitute count is directed to the same patentable invention as count 1. [FN22] As explained in section 1.601(n), invention "A" is a separate patentable invention with respect to invention "B" only if invention "A" is both new (§ 102) and non-obvious (§ 103) in view of invention "B" when invention "B" is assumed to be prior art with respect to invention "A". Where invention "A" is a species of a generic invention "B," the moving party must show that the species would have been unobvious in view of the generic invention. Chiong v. Roland, 17 USPQ2d 1541, 1544 (BPAI 1990), citing Patent Interference Proceedings; Final Rule (hereinafter Final Rule Notice), 49 Fed.Reg. 48416, 48433 (Dec. 12, 1984), reprinted in 1050 O.G. 385, 405 (Jan. 29, 1985), corrections printed in 50 Fed.Reg. 23122 (May 31, 1985), 1059 O.G. 27 (Oct. 22, 1985). In considering the obviousness of invention "A", the subject matter of invention "B" must be considered in combination with the relevant prior art. See Example 34 of Final Rule Notice, 49 Fed.Reg. at 48435, 1050 O.G. at 404. Furthermore, a determination of obviousness may be based on the "common knowledge and common sense of the person of ordinary skill without any specific hint or suggestion in a particular reference." In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Thus, in order to show that the proposed count is directed to the same patentable invention as count 1, Behr et al. should have submitted evidence with the motion in the form of patents, publications or affidavits, [FN23] or should have requested permission to present testimony, [FN24] demonstrating that it would have been obvious to implement the subject matter broadly recited in the proposed count by employing the omitted feature, which is recited in count 1. Since Behr et al. have not submitted evidence of this type, the EIC did not err in denying their motion to substitute.
Instead of presenting evidence of the type discussed above, Behr et al. argue that the prosecution history of the Talbott et al. patent demonstrates that the omitted limitation is without patentable significance. The patent file reveals that the omitted limitation appeared in claim 19 of the Talbott et al. patent application as filed, which claim was rejected (application paper No. 3) together with claims 1-18 and 20-25 under 35 U.S.C. § 103 as unpatentable over Tilman U.S. Patent No. 4,355,494 (TX D) in view of Wenger U.S. Patent No. 4,235,064. A subsequently prepared Interview Summary Record (paper No. 4) states, inter alia, that "[a]pplicant will submit amendment to claims 1 and 19 to include aligning of the strips and recite the engagement means being positioned downstream of the alignment of the strips." Claims 1 and 19 were amended accordingly in paper No. 6 by adding the limitation which is the subject of the Talbott et al. motions under 37 CFR 1.633(a) and 1.633(g). We agree with the EIC that these facts are insufficient to establish that the examiner's allowance of claim 19 as amended was not based at least in part on the presence of the limitation in question. Furthermore, even if the record clearly established that the examiner considered this limitation to be without patentable significance, such an ex parte determination by the examiner nevertheless would be insufficient to meet Behr et al.'s burden of proof in this inter partes proceeding. Compare Martin v. Mayer, 823 F.2d at 503, 3 USPQ2d at 1335 ("An examiner's decision to allow the copied claim to Mayer for interference purposes does not satisfy Mayer's threshold burden in the interference proceeding of presenting a prima facie case of compliance with section 112 paragraph 1").
*13 Talbott et al. also argue that Behr et al. are not entitled to the proposed count because it is broader than the broadest claim of either party. This argument is without merit because it fails to take into account Behr et al.'s proposed amendment (application paper No. 8) to add new claim 14, which is identical to the proposed count, to their involved application. Although the motion does not mention this proposed amendment, the certificate of service attached thereto indicates that Talbott et al. were served with a copy. Furthermore, since the obvious purpose of submitting claim 14 was to have it included among the claims designated as corresponding to the proposed count, Talbott et al. have not been prejudiced by the motion's failure to request that claim 14 be so designated, as required by 37 CFR 1.637(c)(1)(ii).
G. Behr et al. motion for a testimony period regarding derivation by Talbott et al.
In their request for a testimony period on the issue of derivation, Behr et al. charge Talbott et al. with derivation as a consequence of joint activities by General Foods Corporation and Dow Chemical Company. Behr et al. characterize this derivation issue as one of unpatentability under 35 U.S.C. § 102(f) and argue that the denial of their motion for testimony is contrary to Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308, 1311 (Fed.Cir.1989) ("The legislative history ... shows that Congress intended that if patentability is fairly placed at issue in the proceeding, it will be determined"); Brooks v. Street, 16 USPQ2d 1374, 1378 (BPAI 1990) ("It would be contrary to the object of interference practice to only decide the patentability questions raised by one party and not the other, as suggested by Brooks, and such would frustrate the alleged purpose of the changes in the statute and the rules") and MPEP § 2300.02 ("The object of the interference will be to resolve all controversies as to all interfering subject matter defined by one or more counts").
Behr et al.'s position is untenable because 37 CFR 1.633(a), by expressly providing that motions thereunder for judgment based on unpatentability may not be based on derivation by an opponent from the moving party, makes it clear that derivation of this type is not a "patentability" issue under the new interference rules. [FN25] Moreover, even under the old interference rules derivation from a party was considered to be a "priority" issue. Daley v. Wiltshire, 293 F.2d 677, 130 USPQ 398, 401 (CCPA 1961). Therefore, the alleged derivation from Behr et al. need not be decided along with patentability issues and the EIC's denial of the motion for a testimony period was not manifestly erroneous. 37 CFR 1.655(a).
H. Conclusion
*14 This interference is hereby remanded to the Examiner-in-Chief for further proceedings consistent with this opinion. Note that this decision is not a final decision for purposes of appellate review, because judgment has not been entered as to the count. 37 CFR 1.658(a).
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Examiner-in-Chief
Ronald H. Smith
Examiner-in-Chief
Harrison E. McCandlish
Examiner-in-Chief
John C. Martin
Examiner-in-Chief
FN1. Vice Chairman Calvert and Examiner-in-Chief R. Smith were added to the panel subsequent to the hearing. See Larson v. Johenning, 17 USPQ2d 1610, 1610 n. 1 (BPAI 1990); In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed.Cir.1985); Ex parte Remark, 15 USPQ2d 1498, 1498 n. 1 (BPAI 1990).
FN2. Although not mentioned in the motion, Behr et al. also filed a proposed amendment to add a new claim 14, identical to the proposed count, to their involved application (see application paper No. 8).
FN3. This was in accord with the board policy of treating papers based on their contents rather than simply on their captions. Pfluger v. Wertheim, 203 USPQ 874, 877 (Comm'r 1978).
FN4. It has recently been proposed to amend 37 CFR 1.633(i) to make it clear that a 37 CFR 1.633(h) motion can be filed in response to a motion for judgment under 37 CFR 1.633(a). See the Commissioner's January 14, 1992, Notice of Proposed Rulemaking, 57 Fed.Reg. 2698 (Jan. 23, 1992), 1135 O.G. 37, 39 (Feb. 11, 1992).
FN5. 37 CFR 1.637(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."
FN6. 37 CFR 1.639(a): "Proof of any material fact alleged in a motion, opposition, or reply must be filed and served with the motion, opposition, or reply unless the proof relied upon is part of the interference file or any earlier application filed in the United States of which a party has been accorded or seeks to be accorded benefit."
FN7. 37 CFR 1.639(b): "Proof may be in the form of patents, printed publications, and affidavits."
FN8. 37 CFR 1.639(c): "When a party believes testimony is necessary to support or oppose a preliminary motion under § 1.633 or a motion to correct inventorship under § 1.634, the party shall describe the nature of the testimony needed. If the examiner-in-chief finds that testimony is needed to decide the motion, the examiner-in-chief may grant appropriate interlocutory relief and enter an order authorizing the taking of testimony and deferring a decision on the motion to final hearing."
FN9. In order to provoke an interference between an application and a patent under the old rules, it was necessary for the applicant to copy a patent claim either exactly or minus only immaterial limitations or variations. 37 CFR 1.205(a). Furthermore, in order to provoke an interference between applications, it was nearly always necessary for an examiner to suggest a claim for copying by one or both applicants. 37 CFR 1.203.
FN10. Other decisions holding that the copier bears the burden of persuasion on the "right to make" issue include: DeGeorge v. Bernier, 768 F.2d 1318, 1321, 226 USPQ 758, 760 (Fed.Cir.1985); Woods v. Tsuchiya, 754 F.2d 1571, 1575, 225 USPQ 11, 13 (Fed.Cir.), cert. denied, 106 S.Ct. 81 (1985); Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984); Holmes v. Kelly, 586 F.2d 234, 199 USPQ 778, 781 (CCPA 1978); Snitzer v. Etzel, 531 F.2d 1062, 189 USPQ 415, 417 (CCPA 1976); Sze v. Bloch, 458 F.2d 137, 173 USPQ 498, 501 (CCPA 1972); Tummers v. Kleimack, 455 F.2d 566, 172 USPQ 592, 594 (CCPA 1972); Noyce v. Kilby, 416 F.2d 1391, 163 USPQ 550, 554 (CCPA 1969); Gubelmann v. Gang, 408 F.2d 758, 161 USPQ 216, 222 (CCPA 1969); Sockman v. Switzer, 379 F.2d 996, 154 USPQ 105, 108 (CCPA 1967); Dreyfus v. Sternau, 357 F.2d 411, 149 USPQ 63, 66 (CCPA 1966); Jepson v. Coleman, 314 F.2d 533, 136 USPQ 647, 649 (CCPA 1963); Crome v. Morrogh, 239 F.2d 390, 391, 112 USPQ 49, 50 (CCPA 1956); Segall v. Sims, 276 F.2d 661, 125 USPQ 394, 395 (CCPA 1960); Brand v. Thomas, 96 F.2d 301, 37 USPQ 505, 506 (CCPA 1938).
FN11. See, e.g., Utter v. Hiraga, 845 F.2d 993, 6 USPQ2d 1709, 1713-14 (Fed.Cir.1988); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1574 n. 2, 227 USPQ 177, 178 n. 2 (Fed.Cir.1985); Sussman v. Cooper, 537 F.2d 531, 190 USPQ 418, 420 (CCPA 1976); Fontijn v. Okamoto, 518 F.2d 610, 186 USPQ 97, 103 (CCPA 1975); Bloch v. Sze, 484 F.2d 1202, 179 USPQ 374, 378 (CCPA 1973); Vogel v. Jones, 486 F.2d 1068, 179 USPQ 425, 431 (CCPA 1973); Glaser v. Strickland, 220 USPQ 446, 455 (Bd.Pat.Int.1983); Hester v. Meguro, 190 USPQ 231, 235 (Bd.Pat.Int.1975); Flynn v. Arkley, 187 USPQ 513 (Bd.Pat.Int.1975); Natta v. Baxter, 179 USPQ 692, 697 (Bd.Pat.Int.1973).
FN12. Sockman v. Switzer, 379 F.2d 996, 154 USPQ 105, 108 (CCPA 1967); Bloch v. Sze, 203 USPQ 527, 532 (Bd.Pat.Int.1977).
FN13. Instead, the court held that the Cramer et al. parent application, when given its "necessary and only reasonable" construction, did not provide clear support for every limitation of the count, citing Binstead v. Littmann, 242 F.2d 766, 113 USPQ 279 (CCPA 1957).
FN14. As noted previously, these motions were previously filed together as one motion under 37 CFR 1.633(g).
FN15. See Schrag v. Strosser, 21 USPQ2d 1025, 1027 (BPAI 1991) (involving alleged public use bar under 35 U.S.C. § 102(b)), citing In re Caveney, 761 F.2d 671, 226 USPQ 1, 3 (Fed.Cir.1985).
FN16. Kingsdown Medical Consultants Ltd. v. Hollister Inc., 863 F.2d 867, 872, 9 USPQ2d 1384, 1389 (Fed.Cir.1988) (en banc), cert. denied, 490 U.S. 1067 (1989).
FN17. No claims corresponding to the count depend on these claims.
FN18. Actually, only rollers 33 in Talbott et al. Fig. 2 are referred to as "pinch rollers" (col. 4, line 27); rollers 38 in Fig. 3, which differ in construction from rollers 33, are referred as "guide rollers" (col. 5, lines 52-67).
FN19. Talbott et al. actually disclose that "[p]inch rollers 33 are preferably mounted at an angle not to exceed 45<<degrees>> from the horizontal" (col. 4, lines 49- 50) (emphasis added).
FN20. Heymes v. Takaya, 6 USPQ2d at 1450.
FN21. Grose v. Plank, 15 USPQ2d 1338, 1342 (BPAI 1990).
FN22. In contrast, a motion to add a count to an interference must show that the proposed count and the existing count(s) define different patentable inventions. 37 CFR 1.637(c)(1)(v).
FN24. 37 CFR 1.639(c).
FN25. In contrast, derivation by an opponent from someone who is not a party is a patentability issue.
CONCURRING-IN-PART AND DISSENTING-IN-PART
James R. Boler
Examiner-in-Chief
*15 I concur in the results reached by the majority except with respect to the Talbott et al motion for judgment under 37 CFR 1.633(a) on the ground that Behr et al lack support under 35 USC 112, first paragraph, for claims 4-13 corresponding to the count (Majority opinion, Section D) and the Talbott et al motion under 37 CFR 1.633(g) to deny Behr et al benefit of an earlier application (Majority opinion, Section E). The primary reason that I reach a different conclusion on these issues is that I disagree with the majority's allocation of the burden of proof on these issues to the patentees, Talbott et al, when, as the cases cited in Section C by the majority show, historically the burden of proof has been on the applicant to prove these issues by clear and convincing evidence.
It was well settled under the old interference rules that an applicant did not have to copy a patent claim exactly in order to provoke an interference. Squires v. Corbett, 560 F.2d 424, 194 USPQ 513, 520 (CCPA 1977). The Court in that case pointed out at 194 USPQ 518 that "we must take care to distinguish between the 'patent claim,' the 'application claim,' and the 'count.' " And at 194 USPQ 519, the Court said [M]anifestly, it is at best confusing, and perhaps erroneous to speak of a party's right to make the 'count.' The semantically appropriate statement of the inquiry is whether a party has the right to make that claim presently pending in his application which the Commissioner has determined to be both patentable and drawn to substantially the same invention as the patent claim." (Emphasis in the original). Thus, even though the Commissioner determined at the time the interference was declared that the application claim was patentable to the applicant, when the issue of 35 USC 112, first paragraph, support was raised by the patentee, the burden was on the applicant to prove that he had adequate support by clear and convincing evidence. Martin, supra.; DeGeorge, supra.; Woods, supra.; Burson, supra.
I fail to see anything in 37 CFR 1.633(a) or (g), 1.637(a) or (g), 1.639 or any of the other "new" rules which either expressly or by implication indicates an intent on the part of the rule makers to change the burden of proof on the issues here considered. Under 37 CFR 1.637(a), all the patentee should be required to do is (1) request judgment, (2) point out the limitations in the applicant's claims corresponding to the count which he deems to lack support in the applicant's disclosure as filed and (3) point to one or more of the above-cited cases which hold that the burden is on the applicant to show where the limitations are expressly supported in his disclosure or show that the limitations are inherent therein. Where an applicant is attempting to take a valuable property right embodied in an issued patent away from a patentee, it seems entirely reasonable to me to place the burden on the applicant of showing that he has the right to claim the invention covered by the patent. This is particularly true where the question of support is based on inherency. The majority places the burden on the patentees, Talbott et al, to prove that the limitation in question is not inherent in the Behr et al disclosure as filed. Since the question of inherency may be impossible to prove or disprove, it seems to me that the burden should be on the applicant to show that a particular limitation is inherently supported by his original disclosure.
*16 The question of who has the burden of proof on the support issues also has or may have a bearing on the question of interference-in-fact. For example, a patentee with the burden of proof who fails to show that some limitation is not inherent in an applicant's disclosure may, as a result thereof, be precluded from showing that there is no interference-in-fact between his patent claims and the application claims.
I, like the majority, find no express support in the Behr et al disclosure as filed for the limitation in question. Therefore, I would sustain the ruling of the examiner-in-chief with respect to both of said motions since Behr et al have not established that the limitation is inherent in their disclosure. In this regard, I would not make any distinction between claims 9 and 13 and the other claims since Behr et al have argued all the claims as a group.
<< Return to Board of Patent Appeals and Interferences Index