Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 CHIONG ET AL.
v.
ROLAND ET AL.
Interference No. 102,118
June 06, 1990
Ronald H. Smith
Examiner-in-Chief
The following motions have been filed:
(1) Roland et al (Roland) motion under 37 CFR 1.633(a) for judgment on the ground that the claims of Chiong et al (Chiong) corresponding to the count are not patentable to Chiong (Paper No. 7).
(2) Roland motion under 37 CFR 1.633(c) to redefine the interfering subject matter by designating claims 1-27 and 29-34 of the involved Chiong patent as corresponding to the count (Paper No. 8).
(3) Chiong motion under 37 CFR 1.633(c)(1) to redefine the interfering subject matter by substituting proposed count A for present count 1 (Paper No. 10).
(4) Chiong motion under 37 CFR 1.633(g) to attack the benefit accorded Roland of the October 26, 1984 filing date of Great Britain application No. 84/27149 (Paper No. 11).
(5) Chiong motion under 37 CFR 1.645(b) "for acceptance of late filed papers" (Paper No. 13).
(6) Roland contingent motion under 37 CFR 1.633(j) for benefit with respect to proposed count A (Paper No. 19).
(7) Roland contingent motion to redefine the interfering subject matter by designating Chiong's claims 1-27 and 29-34 as corresponding to proposed count A (Paper No. 20).
Motion (5)
The motion is granted for the reasons set forth in support of the motion and in the Chiong reply and renewed motion. Accordingly, the papers will be considered as though they were timely filed.
The motion is denied. Chiong urges that the limitation presented in the proposed count is "necessary to insure that the method produces a negative tone resist pattern." However, the undersigned agrees with Roland that the modification is unnecessary because the count is plainly limited to the production of negative tone resist patterns without the proposed change. Moreover, the proposed modification is improper because it would insert a limitation that is not present in Roland's claims corresponding to the count, nor in Roland's benefit application. Roland is entitled to a count which is broad enough to encompass his broadest patentable claim designated as corresponding to the count. Heymes v. Takaya, 6 USPQ2d 1448 (BPA & I 1988). MPEP 2309.01.
Motions (6) and (7)
The motions are dismissed as moot since they are contingent on the granting of motion (3) to substitute proposed count A, a contingency which has not occurred.
Motion (1)
The motion is dismissed for failure to comply with 37 CFR 1.637(a)(2) and (3). Claim 28 is the only claim of Chiong designated as corresponding to the count, and motions pursuant to 37 CFR 1.633(a) for judgment are authorized only with respect to claims designated as corresponding to the count. Claim 28 of Chiong has specific limitations, including those of claim 25 on which it depends, and Roland does not indicate where in the references those limitations are anticipated or suggested. As pointed out by Chiong, Roland merely makes general allegations that the Chiong patent does not distinguish over the references, but nowhere does Roland present a clear and concise statement as to how any of the references anticipate claim 28 within the meaning of 35 USC 102; nor does Roland present a prima facie case of obviousness for the invention set forth in Chiong claim 28. Indeed, Roland does not even indicate whether the motion is based on § 102 or § 103 of the statute, and he has plainly failed to comply with the requirements of the rule.
*2 As the proponent of the proposition that Chiong's claim 28 is unpatentable, Roland has the burden to clearly establish such. Jacobs v. Moriarity, 6 USPQ2d 1799 (BPA & I 1988). As pointed out by the Board in Jacobs, the burden on the movant is no less than on an Examiner making a rejection of claims or on a Requestor for reexamination. See MPEP 706 and 2214. Certainly, if Roland considered any of the references to be anticipatory, he should have pointed to the disclosure in the reference--by page and line--upon which claim 28 reads. He did not. Similarly, if Roland considered the subject matter of claim 28 to have been obvious, he should have analyzed the references in accordance with the MPEP and with the principles of Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). He did not. In other words, Roland did not make out a prima facie case for obviousness as he is required to do. Apparently, Roland believed the burden was on Chiong to demonstrate patentability since he indicated on page 4 of his motion that the Ito et al reference "was not clearly distinguished by Chiong et al." Plainly, Roland did not met his burden, nor did he comply with the express requirements of 37 CFR 1.637(a)(2) and (3).
Motion (2)
The motion is denied. Roland contends that 37 CFR 1.606, last sentence, establishes "a presumption that the claims of a patent are not directed to separate patentable inventions." According to Roland, "it is mandatory that all the claims of the Chiong et al patent be designated as corresponding to the count" and the burden should be placed on Chiong to overcome the presumption if any claims are to be designated as not corresponding to the count. The undersigned disagrees and submits that Roland has misinterpreted the rule.
The last sentence of § 1.606 reads as follows:
At the time an interference is initially declared (§ 1.611), a count shall not be narrower in scope than any patent claim which corresponds to the count and any single patent claim will be presumed, subject to a motion under § 1.633(c), not to contain separate patentable inventions.
The presumption of the rule that a single patent claim does not contain separate patentable inventions is plainly limited to patent claims which correspond to the count. This is evident from the language indicating that a count shall not be narrower than any patent claim which corresponds to the count. If the rule intended that patent claims not corresponding to the count are presumed not to contain separate patentable inventions, then the rule would have read "a count shall not be narrower than any patent claim" without the limitation "which corresponds to the count." This is made clear in the commentary to the new rules where it is stated in response to a question regarding the meaning of § 1.606 that "at the time an interference is declared a rebuttable presumption will exist that any patent claim designated to correspond to a count does not embrace separate patentable inventions." Notice of Final Rules, 49 Fed.Reg. 48416, 48436 (Dec. 12, 1984), 1050 O.G. 385 (Jan. 29, 1985).
*3 When an interference is declared, there is a rebuttable presumption that "a claim which is not designated to correspond to the count is not directed to the same patentable invention as the claims designated to correspond to the count." Orikasa v. Oonishi, 10 USPQ2d 1996 (Comm'r 1989). Here the examiner designated claims 1-27 and 29-34 as not corresponding to the separate patentable invention of the count, and the burden of persuasion and proof to the contrary is on Roland, the movant. Roland has not met his burden. As pointed out in the Notice, supra, at 48433 the standard of patentability will not be applied "on a mutual basis." If a species claim is patentable over a generic claim, the species claim is a separate patentable invention from the generic claim. Here the primary examiner determined that species claim 28 of Chiong was drawn to a separate patentable invention from the generic claims of Chiong. That determination is not rebutted by Roland's argument that the generic claims are not patentable over species claim 28.
Motion (4)
The motion is denied for the reasons substantially as set forth in the opposition. The evidence submitted with the opposition is considered sufficient to establish that the preferential diffusion required by the count necessarily and inherently occurs in the example of the British patent application. Chiong's attorney argument to the contrary is not persuasive.
Service of Preliminary Statements
The preliminary statements already filed in the Patent and Trademark Office are required to be served (but not filed again) within twenty days from the date of this order.
Testimony
Most interferences do not require motions for additional discovery (37 CFR 1.687(c)). Therefore, no period for filing such motions has been set forth herein. However, if discovery is deemed necessary, the party should contact the undersigned via a conference call, including opposing counsel, before the start of the junior party's testimony-in-chief period.
Testimony-in-chief of the junior party Chiong to open on July 9, 1990 and to close on September 9, 1990.
Cross-examination of any Chiong affiants to close on October 9, 1990.
If Roland wishes to cross-examine any Chiong affiants, he should file a pro forma request therefor (37 CFR 1.672(b)) and proceed during the time set. After such request, it becomes the responsibility of Chiong to notice the depositions of his affiants during the period set for cross-examination, arrange for the court reporter and file the certified transcript of the deposition (37 CFR 1.673(e) and 1.672(b)). Failure to notice the depositions during the period set may result, upon motion from the opponent, in according the affidavit testimony no weight at final hearing (37 CFR 1.673(e) and 1.672(b)).
*4 Testimony taken by affidavit must be filed by the close of the relevant testimony period (37 CFR 1.672(b)).
A certified transcript of a deposition must be filed by the time set in 37 CFR 1.678.
If Roland desires a rebuttal testimony period, he should advise the undersigned by October 24, 1990.
In the event that no request for rebuttal testimony is filed by October 24, 1990, the following additional times are set:
(1) Records due November 24, 1990.
(2) Chiong brief due December 24, 1990.
(3) Roland brief due January 24, 1991.
(4) Chiong reply brief due February 13, 1991.
Suggestion for Negotiations
The parties are strongly encouraged to contact each other, prior to the start of Chiong's testimony period, and attempt to settle this interferene or, failing that, to narrow as much as possible the issues for final hearing. The EIC can be expected to cooperate in allowing reasonable time for a bona fide attempt at such negotiations.
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