Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE CHAMBERS ET AL. REEXAMINATION
PROCEEDINGS
Control No. 90/001,773; 90/001,848;
90/001,858; 90/002,091
June 26, 1991
*1 Filed: July 20, 1990
Filed: October 5, 1989
Filed: September 25, 1989
Filed: May 17, 1989
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
ORDER
Documents constituting a
"Petition to the Commissioner," and styled PETITION IN REEXAMINATION
PROCEEDING and PETITION TO THE COMMISSIONER PURSUANT TO 37 C.F.R. §
181 AND 1.182, have been filed with the Patent and Trademark Office in
connection with the above-identified reexamination proceedings. The record
reveals that a CONTINGENT NOTICE OF APPEAL, which PTO treats as a notice of
appeal, was filed on May 1, 1991, and that a brief on appeal (37 CFR § 1.192) is therefore due on or before July 1,
1991. In order to assist in preparation of the appeal brief, a decision in this
day being entered on the "Petition to the Commissioner." An opinion
fully setting out the facts and stating the reasons in support of the decision
being entered today will follow in due course. A prompt decision on the
"Petition to the Commissioner" should permit orderly preparation of
the brief on appeal.
Upon consideration of the
PETITION IN REEXAMINATION PROCEEDING and the PETITION TO THE COMMISSIONER
PURSUANT TO 37 C.F.R. § 181 AND 1.182
it is
ORDERED that the request
to "strike" Reexamination Control No. 90/001,858 and Reexamination
Control No. 90/002,091 is denied because the Petition to the Commissioner was
not timely filed [37 CFR § 1.181(f) ]
and it is
FURTHER ORDERED that the
request to "instruct" the examiner "to rely only on patents and
other printed publications and not to rely upon the affidavits, declarations or
transcripts included by the reexamination requestor in Control No.
90/002,091" is denied because each rejection made by the examiner is based
on "prior art consisting of patents or printed publications" (35
U.S.C. § 301) and it is
FURTHER ORDERED that the request to
"order" the examiner to hold an interview is denied because the
examiner did not abuse his discretion in holding on page 2 of the final
rejection that "an interview is not deemed necessary nor appropriate at
this time because the issues are clearly presented in the arguments set forth
in the papers submitted by the parties in this proceeding" and it is
FURTHER ORDERED that the
request to "instruct" the examiner to refrain from basing any prior
art rejection on the Schroder, "Large Area Coating of Glass for
Modification of its Transmission," or ECOM, "Comparison of some
Physical and Chemical Properties of Vacuum Evaporated and Sputtered
Nickel-Chromium Films," is denied because the correctness of any rejection
based on Schroder and/or ECOM is a matter to be resolved by the Board of Patent
Appeals and Interferences in the appeal and it is
*2 FURTHER ORDERED
that the request to "withdraw" the final rejection is denied because
the final rejection is not "tainted" by reliance on "non-patent,
non-printed publications" or the Schroder and/or ECOM publications and it
is
FURTHER ORDERED that the
request that the examiner be "replaced" is denied because nothing has
occurred in these reexamination proceedings which would justify removal of the
examiner and it is
FURTHER ORDERED that the
document filed May 1, 1991, and styled CONTINGENT NOTICE OF APPEAL, shall be
deemed to be a notice of appeal and an appeal shall be deemed to have been filed as of May 1, 1991
(37 CFR § 1.191) and it is
FURTHER ORDERED that the brief on appeal (37 CFR § 1.192) is due on or before July 1, 1991 and
it is
FURTHER ORDERED that no
extension of time shall be granted extending the time for filing the brief
absent the most compelling of circumstances (the press of other business shall
not be deemed a compelling circumstance) and it is
FURTHER ORDERED that an
opinion in support of this decision shall issue in due course and it is
FURTHER ORDERED that this
order be transmitted to counsel by fax and Federal Express.
MEMORANDUM OPINION AND ORDER
This opinion sets out the
facts, and more fully explains the rationale, in support of an ORDER entered on
May 24, 1991, in the above-identified reexamination proceedings. The ORDER
denied a PETITION IN REEXAMINATION PROCEEDING (petition), dated March 26, 1991,
filed by The BOC Group Plc. The petition was received in Patent Examining Group
110 on March 27, 1991.
Facts
1. The players in this matter are:
(a) The BOC Group Plc.
(BOC);
(b) Shatterproof Glass
Corporation (Shatterproof); and
(c) PPG Industries,
Inc. (PPG).
2. BOC is the owner of
record of U.S. Patent 3,826,728 (Patent). The Patent is the subject of four
reexamination proceedings.
3. Shatterproof was the
owner of the Patent at the time it issued on June 10, 1986.
4. Shatterproof filed for
bankruptcy in May of 1987 in the U.S. Bankruptcy Court in the Eastern District
of Michigan. In the Matter of Shatterproof Glass Corporation and Thermoproof
Glass Co., Case No. 87-03180-B and Case No. 87-03181-B.
5. The Patent was among
Shatterproof's assets. In February of 1988, the Bankruptcy Court entered an
order authorizing the sale of Shatterproof's interests in a number of assets,
including the Patent, to BOC, subject to the retention of certain rights
described in an agreement incorporated by reference in the order.
6. In compliance with the
February 1988 order, Shatterproof executed an assignment of the Patent to BOC.
The assignment was recorded in the Patent and Trademark Office (PTO) on August
4, 1988.
7. Among the specific
rights retained by Shatterproof in the agreement was a right to sue PPG for past and future
infringement of the Patent. At this point, it will be noted that there is a
dispute between BOC and Shatterproof as to the extent to which Shatterproof
still owns the Patent. The dispute is before the Eastern District of Michigan.
*3 8. On August
10, 1988, Shatterproof filed Civil Action No. 88-CV-73312- DT in the Eastern
District of Michigan charging PPG with infringement of the Patent.
9. Since 1981, PPG has
had a technology agreement with BOC. Pursuant to the technology agreement, PPG
automatically received a license to the Patent and the right to indemnification
from BOC in the event that PPG was successfully sued for infringement while
acting under the technology agreement.
10. In the infringement
litigation in the Eastern District of Michigan, cross motions for partial
summary judgment were filed by PPG and Shatterproof to seek clarification as to
title to the Patent.
11. At a June 5, 1989,
hearing, the Eastern District of Michigan concluded that Shatterproof had
assigned all right, title and interest in the Patent to BOC and that BOC was
the owner of the Patent. Partial summary judgment on the title issue was
therefore granted to PPG.
12. On July 26, 1989,
Shatterproof filed a motion under Fed.R.Civ.P. 60(b) in the Bankruptcy Court to
rescind the February 1, 1988, order authorizing the sale of the Patent. The
motion is still pending.
13. Four requests for reexamination of the
Patent are pending. If a certificate canceling the claims of the Patent is
issued, PPG can avoid an adverse judgment in the Shatterproof/PPG infringement
case. BOC seemingly has no interest in maintaining the Patent, perhaps because
it might have to indemnify PPG if PPG loses the infringement case.
Shatterproof, on the other hand, has an interest in maintaining the Patent so
that it can continue with the Shatterproof/PPG infringement case. Shatterproof
is not concerned with who pays any successful judgment it might obtain, i.e.,
PPG or BOC.
14. A patent owner is the
only entity authorized to participate in the merits phase of a reexamination
proceeding. PTO rules do not permit a "third party" to participate in
the merits phase of a reexamination proceeding. PPG, as a third party, is not
authorized to participate in the reexamination. Shatterproof is not entitled to
participate in the reexamination because it is not an owner. BOC is the only
entity authorized by PTO rules to prosecute the merits phase of the
reexaminations. As noted above, however, BOC seemingly has indicated that it
has no desire to participate in the reexamination.
15. Shatterproof sought
to prosecute the reexamination proceedings. PTO denied Shatterproof's request
and PTO's denial was upheld on judicial review. Shatterproof Glass v. Samuels,
Civil Action No. 90-983-A (E.D.Va. Sept. 14, 1990) ("The motion of the
defendant Commissioner of Patents and Trademarks for summary judgment is
granted, and the decision of the Commissioner refusing to allow the plaintiff to prosecute the
re-examination of Patent No. 3,826,728 is affirmed.").
16. Throughout litigation
in the Eastern District of Michigan and the Bankruptcy Court, orders have been
entered seeking to maintain a semblance of status quo.
*4 17. On October
18, 1989, the Bankruptcy Court entered an order which reads in pertinent part:
(1) As soon as
practicably possible, BOC will provide Shatterproof with a copy of any paper
sent to or received from ... PTO ... or another party regarding any
re-examination of ... [the Patent].
(2) As soon as
practicably possible after the preparation of any substantive response to any
paper which BOC intends to file with the PTO, BOC will provide Shatterproof
with a copy of such proposed response; it being the good faith intent of the
parties hereto that BOC will provide such BOC response to Shatterproof with
sufficient time that Shatterproof will be able to prepare its own remarks, if
it desires, and provide a copy of the same to BOC in sufficient time that BOC's
response and Shatterproof's remarks, if any, can be submitted to the PTO within
whatever time limits have been set for response by the PTO.
(3) BOC shall submit
Shatterproof's remarks along with its own response to the PTO as an attachment
thereto.
(4) In the event BOC
has not received any remarks from Shatterproof by the time BOC must respond to
the PTO paper to be timely, BOC shall be free to file its own response.
(5) Even if BOC does
not intend to file a response of its own, it shall nevertheless file
Shatterproof's remarks to the paper if Shatterproof advises that it wishes to
have remarks filed.
18. On November 28, 1990,
the Eastern District of Michigan entered an order which reads in pertinent
part:
IT IS ORDERED that BOC
shall request an interview with the United States Patent and Trademark Examiner
in which interview Shatterproof is allowed to participate.
19. On February 20, 1991,
the Bankruptcy Court entered a further order which reads in pertinent part:
(1) If BOC decides to
appeal from any action in the pending reexamination of ... [the Patent], BOC
shall attach to any such appeal and incorporate by reference into its appeal
any remarks supplied by Shatterproof to BOC in a timely manner.
(2) If BOC decides not
to file an appeal of any reexamination of ... [the Patent], it shall
nonetheless formally file an appeal if requested to by Shatterproof in a timely
manner and attach and incorporate into such appeal remarks prepared and signed
on behalf of Shatterproof.
(3) If BOC decides to
petition the Commissioner from any action in the pending reexamination of ...
[the Patent], BOC shall attach to any such petition and incorporate by
reference into its petition any remarks supplied by Shatterproof to BOC in a
timely manner.
(4) If BOC decides not
to file a petition of any reexamination of ... [the Patent], it shall
nonetheless formally file a petition if requested to by Shatterproof in a
timely manner and attach and incorporate into such petition remarks prepared
and signed on behalf of Shatterproof.
(5) This Order does not
affect the obligations set forth in the Court Order of October 18, 1989.
*5 20. Pursuant to
Paragraph (4) of the Bankruptcy Court's order of February 20, 1991, BOC filed
the petition. Attached to the petition is a PETITION TO THE COMMISSIONER
PURSUANT TO 37 C.F.R. § 181 AND 1.182,
dated March 15, 1991, prepared by Shatterproof.
Discussion
A. A. Boc's petition
In view of In re Blaese,
Reissue Application No. 07/254,260, __ U.S.P.Q.2d ___ (Comm'r Pat. May 15,
1991), PTO regards the petition, together with the attachment prepared by
Shatterproof, as having been filed by BOC, the entity entitled to prosecute the
reexamination proceedings. The petition contains six prayers for relief. All
requests for relief were previously denied in the PTO order entered on May 24,
1991.
1. First Request for
Relief
The first request for
relief is:
Strike Requests for
Reexamination Nos. 90/002,091, filed July 20, 1990, and 90/001,858, filed
October 5, 1989, as a subterfuge for converting the pending reexamination into
a testimonial inter-party [sic--inter partes] proceeding in violation of
reexamination procedures required by law.
Reexamination Control No.
90/001,858 and Reexamination Control No. 90/002,091 were filed by PPG. The
first request is denied because the petition was not timely filed. Under 37 CFR
§ 1.181(f):
Except as otherwise
provided in these rules, any such petition not filed within 2 months from the
action complained of, may be dismissed as untimely.
BOC argues, inter alia, that the filing of the noted requests for
reexamination (i.e., the second and third requests for reexamination filed by
PPG during the original reexamination proceeding) is contrary to the intent of
the statute as it permits PPG to convert the original proceeding into an inter
partes proceeding. BOC's argument questions the propriety of the filing of the
reexamination requests by PPG. While the patent owner is precluded under 37 CFR
§ 1.530 from filing a submission in a
reexamination proceeding prior to a reexamination
order, an appropriate submission can be filed within the two- month period
following the reexamination order. The orders for reexamination sought to be
"stricken" were entered over 15 months and 6 months, respectively,
prior to the filing of the petition. Petitioner has presented no showing why
the petition could not have been timely filed within two months of the reexamination
orders.
2. Second Request for
Relief
The second request for
relief is:
In the alternative,
instructing the Examiner to rely only on patents and other printed publications
and not to rely upon the affidavits, declarations or transcripts included by the
reexamination requester in Control No. 90/002,091.
BOC's second request is
denied because each rejection made by the examiner is based on "prior art
consisting of patents or printed publications" (35 U.S.C. § 301). BOC's argument that it is contrary to
the reexamination statute for affidavits, declarations, and/or transcripts of
depositions to be submitted and considered in a reexamination proceeding is not
tenable. After reexamination has been ordered, the examination on the merits is
dictated by § 305. Section 305
specifically provides that "reexamination will be conducted according to
the procedures established for initial examination under the provisions of
sections 132 and 133 of this title." See also In re Etter, 756 F.2d 852, 856, 225 USPQ 1, 4 (Fed. Cir.) (en
banc), cert. denied, 474 U.S. 828 (1985).
*6 Section 132
provides:
Whenever, on
examination, any claim for a patent is rejected, or any objection or
requirement made, the Commissioner shall notify the applicant thereof, stating
the reasons for such rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of his application.... (emphasis added).
A rejection of a claim in a reexamination proceeding must be based
upon patents and/or printed publications. It would be contrary to § § 305 and 132 to preclude consideration of
other "information" (e.g., affidavits, declarations and transcripts)
to help define the scope and content of the prior art, or to establish that a
claimed invention is not anticipated under 35 U.S.C. § 102 or unpatentable under 35 U.S.C. § 103 based on obviousness.
3. Third Request for
Relief
The third request for
relief is:
Order the Examiner to
permit an interview as requested prior to final action by the record patent
owner.
A decision entered on
March 13, 1990, waived the provisions of 37 CFR § 1.550(e) to the extent that papers filed by BOC (the patent
owner) may include remarks prepared by
Shatterproof. BOC's response to the Office action of April 24, 1990, was filed
on June 28, 1990, along with comments prepared by Shatterproof. Compare In re
Blaese, Reissue Application No. 07/254,260, __ U.S.P.Q.2d ___ (Comm'r Pat. May
15, 1991). Through BOC, Shatterproof requested "an interview with the
Examiner prior to a final rejection if the Examiner is inclined to issue such a
rejection." In recognition that the waiver of 37 CFR § 1.550(e) did not grant Shatterproof a right
to attend or participate in an interview before the examiner, BOC filed a
petition on December 4, 1990, requesting (1) that an interview be conducted
along with a complete stenographic record, and (2) that the rules be further
waived and Shatterproof be permitted to participate and discuss the
patentability of the claims involved. Subsequently, in an Office action (final
rejection) entered January 28, 1991, the examiner addressed the request for an
interview stating:
an interview is not
deemed necessary nor appropriate at this time because the issues are clearly
presented in the arguments set forth in the papers submitted by the parties in
this proceeding.
In the petition, BOC now requests that the Commissioner order the
examiner to permit an interview as requested prior to the final rejection. BOC
argues (petition, p. 9) that due to the complexity of the case, an interview
would be useful. BOC notes that:
the United States
District Judge overseeing Shatterproof's bankruptcy ordered the BOC Group, Plc. to request an
interview with the examiner in which Shatterproof was to participate (emphasis
added).
*7 BOC's request that the examiner be ordered to conduct an
interview is denied.
PTO acknowledges that the
court ordered BOC to request an interview. The court did not purport to order
the PTO to grant an interview. Whether an interview should be granted in a
reexamination proceeding is an issue to be decided by the PTO. Section 2281 of
the Manual of Patent Examining Procedure (5th ed., rev. 4, Oct. 1986) provides
that interviews in reexamination proceedings are conducted in accordance with
MPEP § 713.01 through § 713.04. MPEP § 713.01 states:
An interview should be
had only when the nature of the case is such that the interview could serve to
develop and clarify specific issues and lead to a mutual understanding between
the examiner and the applicant, and thereby advance the prosecution of the
application.
The examiner, prior to issuing the final rejection, addressed the
request for an interview and decided that an interview was neither necessary
nor appropriate as the issues were clearly presented by the parties. The record
further shows that in the Advisory Action, mailed April 4, 1991, the examiner
again addressed the request for an interview and concluded [t]he record in this
reexamination proceeding is clear and an interview is not deemed necessary nor appropriate.
The examiner did not abuse any discretion in denying an interview
in this particular reexamination proceeding. The request for an interview is
denied.
Since BOC's request for
an interview is denied, BOC's earlier petition, filed December 4, 1990,
requesting a complete stenographic record of any interview and a waiver of the
rules to permit Shatterproof to attend and participate in any interview is dismissed
as moot.
4. Fourth Request for
Relief
The fourth request for
relief is:
Instruct the Examiner
that no rejection under 35 U.S.C. § 102
and/or 103 can be made based on the German Publication ... and/or ECOM
[publication] ... by Pratt, Weintraub and Wade. These references were
thoroughly discussed in the reexamination resulting in the Certificate issued
B1 3,826,728....
BOC's fourth request, that the examiner be instructed that no
rejection can be made based on the German or ECOM publication because these
publications were thoroughly discussed in a prior concluded reexamination
proceeding, is denied. BOC's fourth request relates to the merits, i.e.,
content of the references, and the correctness ofthe rejection. Issues
involving the merits of any rejection in a reexamination proceeding, as opposed
to whether reexamination should be ordered, are matters within the jurisdiction
of the Board of Patent Appeals and Interferences (Board) in an appeal properly
taken under 35 U.S.C. § § 134 and 306. Under the procedures
established by Congress, the Board determines whether any final rejection made
by an examiner is correct on the merits.
*8 5. Fifth
Request for Relief
The fifth request for
relief is:
Withdraw the final
rejection of January 28, 1991, as being premature.
BOC's fifth request is
denied. A review of the record does not reveal that a new ground of rejection
was made in the final rejection. Except for the arguments that the final action
is "tainted," and therefore an interview should be granted,
petitioner has set forth no reasons as to why the final rejection is premature.
Shatterproof's argument, through BOC, that the final rejection "is tainted
due to its reliance upon non-patent, non-printed publications" (e.g., affidavits,
declarations and transcripts) and "[t]herefore, to allow an untainted
review of the patents and printed publications before the Office, the final
Office Action should be withdrawn and provisions made for an interview on the
case" is not appropriate grounds for contesting the correctness of the
finality of the rejection. Further, as noted above, the use of affidavits,
declarations, and transcripts in reexamination is appropriate under the
circumstances of this case.
6. Sixth Request for
Relief
The sixth request for
relief is:
Change the Examiner
handling the pending reexaminations as to U.S. Patent No. 3,826,728.
BOC's sixth request is
denied. The fact that the examiner has spent considerable time considering the
affidavits, declarations, and transcripts which BOC alleges are improper prior
art is not a sufficient reason for removal of the examiner. Furthermore, there
is no basis in the record to conclude, and BOC has set forth no evidence to
support its contention, that the examiner is "hostile" to the Patent
or BOC or Shatterproof. BOC's argument that inappropriate hostility is
evidenced by the examiner's refusal to grant an interview is not supported by
the record. The examiner held on two occasions that because the record is
clear, an interview is neither necessary nor appropriate. The examiner's
holding that an interview is not appropriate, by itself, fails to show
"hostility" on the part of the examiner.
B. PPG's request to
participate in these reexaminations
Under 37 CFR § 1.550(e):
[t]he active participation of the
reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf
of the reexamination requester will be acknowledged or considered.
A petition filed on April 9, 1991, by third-party requester PPG,
is an improper submission under §
1.550(e) since it was filed after ex parte reexamination on the merits
started. Accordingly, PPG's petition will not be made of record in the reexamination file and is being
returned herewith.
There is no showing of an
extraordinary situation which would permit the entry and consideration of PPG's
petition. It is noted that a third party has no right to comment or participate
in a reexamination proceeding beyond the rights specifically provided for by the
reexamination statute, i.e., file a request for reexamination and comment on
any statement filed by a patent owner. The statutory provisions regarding the
reexamination of a patent, and the rules promulgated in support thereof, do not
provide for opposition to the grant of a reexamination certificate by a third
party. Yuasa Battery Co. v. Commissioner, 3 U.S.P.Q.2d 1143 (D.D.C.1987). See
also In re Etter, supra, 756 F.2d at 858 n. 6, 225 USPQ at 5-6 n. 6 (the
reexamination per se of the claims is entirely ex parte); Syntex (U.S.A.) Inc.
v. U.S. Patent and Trademark Office, 882 F.2d 1570, 1573, 11 U.S.P.Q.2d 1866,
1868 (Fed.Cir.1989) (a reexamination is conducted ex parte after it is
instituted) (original emphasis); In re Opprecht, 868 F.2d 1264, 10 U.S.P.Q.2d
1718 (Fed.Cir.1989) (a third party does not participate before PTO in a
reexamination); Animal Legal Defense Fund v. Quigg, ___ F.2d ___, ___, 18
U.S.P.Q.2d 1677, 1685 (Fed.Cir.1991) (five judge court) (third party may not
protest grant of a patent).
ORDER
*9 Upon
consideration of BOC's petition, it is
ORDERED that the request
to "strike" Reexamination Control No. 90/001,858 and Reexamination
Control No. 90/002,091 is denied and it is
FURTHER ORDERED that the
request to "instruct" the examiner "to rely only on patents and
other printed publications and not to rely upon the affidavits, declarations or
transcripts included by the reexamination requester in Control No.
90/002,091" is denied and it is
FURTHER ORDERED that the
request to "order" the examiner to hold an interview is denied and it
is
FURTHER ORDERED that the
request to "instruct" the examiner to refrain from basing any prior
art rejection on the Schroder, "Large Area Coating of Glass for
Modification of its Transmission," or ECOM, "Comparison of Some
Physical and Chemical Properties of Vacuum Evaporated and Sputtered
Nickel-Chromium Films," is denied and it is
FURTHER ORDERED that the
request to "withdraw" the final rejection is denied and it is
FURTHER ORDERED that the
request that the examiner be "replaced" is denied and it is
FURTHER ORDERED that the
brief on appeal (37 CFR § 1.192)
continues to be due on or before July 1, 1991, as provided by the ORDER entered
May 24, 1991, and the further ORDER
entered June 6, 1991, and it is
FURTHER ORDERED that this
order be transmitted to counsel by fax and Federal Express.
20 U.S.P.Q.2d 1470
END OF DOCUMENT