Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
JONAS, [FN1] JUNIOR PARTY
v.
ABILDSKOV, [FN2] SENIOR PARTY
Interference No. 102,086
April 19, 1990
Richard W. Hanes, Esq. for Jonas, Junior Party
Calvin E. Thorpe, Esq. of Thorpe, North & Western for
Abidskov, Senior Party
Harry F. Manbeck, Jr.
Assistant Secretary and Commissioner of Patents and Trademarks
MEMORANDUM OPINION AND ORDER
*1 Jonas has filed a petition to the
Commissioner (Paper No. 15), seeking to (1) stay the interference, (2) waive
rules, and (3) set aside an order to show cause entered by an
Examiner-in-Chief. For reasons hereinafter given, all requested relief is
denied.
Background
The interference was
declared between Jonas' patent and Abildskov's application on March 8, 1989.
The Examiner-in-Chief
entered a decision on preliminary motions on July 20, 1989 (Paper No. 11).
A testimony period for
Junior Party Jonas was set to close on October 15, 1989 (Paper No. 11, page 3).
Based on the interference
record in the Patent and Trademark Office, no testimony was taken by Jonas.
Accordingly, on January 23, 1990, the Examiner- in-Chief entered an order
requiring Jonas to show cause why judgment should not be entered against him
(Paper No. 14). A period of twenty (20) days was set within which Jonas could
respond.
Jonas did not respond
within the twenty-day period, which expired on February 12, 1990.
On February 20, 1990,
Jonas filed the petition (Paper No. 15). Exhibits A through J accompanied the petition.
On February 27, 1990, a
panel of the Board of Patent Appeals and Interferences (Board) entered judgment
(Paper No. 16) against Jonas on the grounds that he had failed to timely
respond to the order to show cause (Paper No. 14). The Board gave no weight to
the petition since it was not filed within the time set to respond to the order
to show cause.
On March 14, 1990, Jonas
caused to be forwarded to the Patent and Trademark Office a request (Paper No.
17) that the Board reconsider its decision. The request was served by
first-class mail on counsel for Abildskov. A stamped certificate on the last
page of the request states:
I hereby certify that
this correspondence is being deposited with the Federal Express as first class mail in an envelope addressed to:
Commissioner of Patents and Trademarks, Washington, D.C. 20231, on March 14,
1990, Richard W. Hanes Richard W. Hanes, Reg. 19530 Date 3/14/90.
The underscored portion of the quoted material is in handwriting.
The request was received in the Mail Room of the Patent and Trademark Office on
March 15, 1990.
The Petition
The petition (Paper No.
15) seeks at least the following relief:
(1) a stay of the
interference pending a decision in Edo Corp. v. Beech Aircraft Corp., Appeal
No. 88-2816, in the U.S. Court of Appeals for the Tenth Circuit;
(2) waiver of the
"rules" to permit the taking of testimony, if needed, after the Tenth
Circuit enters its decision; and
*2 (3) setting
aside the order to show cause entered by the Examiner-in- Chief on January 23,
1990.
Several exhibits
accompanied the petition which had not previously been submitted to the
Examiner-in-Chief. A petition in an interference, however, is decided on the
record made before the Examiner-in-Chief. 37 CFR § 1.644(d). Since Exhibits B, E, F, I, and J were not presented to
the Examiner-in-Chief, they will not be considered and are returned to Jonas as
improper papers. 37 CFR § 1.618(a).
Exhibit H is also returned to Jonas, inasmuch as it is a copy of a paper
already of record in the file of the interference. 37 CFR § 1.618(b).
Discussion
The petition is denied
for several independent and dispositive reasons.
First, the record does
not reveal that Jonas asked the Examiner-in-Chief to stay the interference
pending a decision by the Tenth Circuit. It is not appropriate in an interference to seek a stay
from the Commissioner in the first instance. Compare Cantello v. Rasmussen, 220
USPQ 664 (Comm'r Pat. 1982); Swanson v. Price, 215 USPQ 970 (Comm'r Pat. 1981).
Second, the record
likewise does not reveal that Jonas asked the Examiner-in- Chief to accept any
testimony which might be taken following litigation in the Tenth Circuit.
Third, it is not clear
how priority of invention can be resolved in the litigation in the Tenth
Circuit. Compare Gutman v. Beriger, 200 USPQ 596 (Comm'r Pat. 1978), and
English v. Heredero, 211 USPQ 1143, 1143-1144 (Comm'r Pat. 1980).
Fourth, Jonas does not
specify which rule he seeks to have waived. Moreover, as Myers v. Feigelman,
455 F.2d 596, 601, 172 USPQ 580, 584 (CCPA 1972) reveals, waiver of rules on
routine basis would defeat the purpose of the rules and substantially confuse
interference practice.
Jonas' Request for Reconsideration
The request (Paper No.
17) transmitted to the Patent and Trademark Office on March 14, 1990, and
received in the Mail Room on March 15, 1990, was not timely filed. The Board's
decision was entered on February 27, 1990. The period for seeking
reconsideration is fourteen (14) days. 37 CFR § 1.658(b). The fourteen-day
period expired on March 13, 1990. The request was transmitted to the Patent and
Trademark Office by Federal Express on March 14, 1990. A document transmitted
to the Patent and Trademark Office by Federal Express is filed on the day it is
received. The request was received in the Mail Room on March 15, 1990. Hence,
the request was not timely filed.
The request will not be
considered by the Board unless Jonas, within ten (10) days, shows sufficient
cause why the request was not timely filed. 37 CFR § 1.645(b).
*3 The period for
seeking judicial review continues to run from entry of the Board's final
decision (Paper No. 16). Thus, proceedings in this interference will be
terminated on April 30, 1990 (35 U.S.C. §
141; 37 CFR § 1.304), unless:
(1) a timely motion to
extend the time for seeking reconsideration is filed and the Board determines
that the motion should be granted, in which case the Board will render a
decision on reconsideration; or
(2) on or before April
30th, an appeal is taken to the Federal Circuit or a civil action is commenced
under 35 U.S.C. § 146.
ORDER
Upon consideration of the
petition (Paper No. 15) filed by Jonas, it is
ORDERED, for the
reasons given above, that the petition is denied.
FN1. Assignor to Beech Aircraft Corporation of Wichita, Kansas, a
corporation of Delaware.
FN2. Assignor to Edo Corporation of College Point, New York, a
corporation of New York.
16 U.S.P.Q.2d 1459
END OF DOCUMENT