Mosley et al.v.Dodge et al.

Board of Patent Appeals and Interferences

Jan 13, 2004

09314492 (B.P.A.I. Jan. 13, 2004)

The opinion in support of the decision being
enteped today is not binding precedent of the Board.
Paper100
Filed by: Interference Trial Section Merits Panel
Mail Stop Interference
P. 0. Box 1450
Arlington, VA 22313-1450
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS M-A I LED
AND INTERFERENCES
JAN 1 3 2004
ELLEN MOSLEY, RAYMOND K. WHITBY PAT& TM OFFICE
BOARD OF PATENT APPEALS and VERA OWEN AND INTERFERENCEIý
Junior Party,
(Patent 5,752,945),
V.
RICHARD N. DODGE, 11, CLIFFORD J. ELLIS,
CONNIE L. HETZLER, ERIC S. KEPNER,
SYLVIA B. LITTLE, LAWRENCE H. SAWYER
and CANDACE D. KRAIJTKRAMER
Senior Party,
(Application 09/314,492).
Patent Interference No. 104,781
Before: SCHAFER, LEE and SPIEGEL, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
FINAL JUDGMENT
During telephone conferences held December 22, 2003, and January 5, 2004, each of the
parties has acknowledged that their respective involved claims were unpatentable in light of certain
prior art. In light of these concessions, there is no apparent reason to continue this interference.
Based on the following findings of fact, we issue a final judgment against both parties.
Findings of Fact
F. 1. This interference is between U.S. Patent 5,752,945 to Mosley et al. and reissue Application
09/314,492 of Dodge et al. Paper 1.
F. 2. The Mosley patent issued from Application 08/846,003, filed 25 April 1997.
F. 3. The Dodge application is a reissue of Dodge Patent 5,820,973. Application 09/314,492,
Declaration for Reissue Patent Application For Richard Norris Dodge, IL
F. 4. Dodge was accorded the benefit of the 22 November 1996 filing date of Application
08/754,417, which issued as the Dodge Patent. Paper 89, p.24.
F. 5. The sole count of this interference is
Count 2
Claim 1 of Mosley patent 5,752,945
or
Claim 25 of Dodge Application 09/314,492 wherein said at least one
first surge layer and said at least one second surge layer are bonded
together.
Paper 90.
F. 6. The claims of the parties which correspond to Count 1 are:
Dodge 25-29
Mosley 1-10
Paper 90.
F. 7. The claims of the parties which do not correspond to Count 1, and therefore are not involved
in this interference, are:
Dodge None
Mosley None
Paper 90.
F. 8. Dodge Claims 25-29 were included in Application 09/314,492 to provoke an interference with
the Mosley patent. Application 09/314,492, Declaration for Reissue Patent Application For
Richard Norris Dodge, II, p. 2.
F. 9. Dodge Claims 25-29 were said to be "copied or substantially copied from Mosley's involved
patent for the purpose of interference." Application 09/314,492, Declaration for Reissue
Patent Application For Richard Norris Dodge, II, p. 2.
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0
We enterjudgment of unpatentability against Dodge, rather than make a recommendation to
the examiner under 37 CFR § 1.659(c). In light of Dodge's concession of unpatentability, we can see
no purpose in merely recommending that the claims be rejected when the case returns to the
examiner. However, our judgment is without prejudice to Dodge submitting amended claims and
presenting evidence and argument asserting the amended claims are patentably distinct from the prior
art when the application returns to the jurisdiction of the examiner.'
Underthe particular circumstances ofthis case, we exercise our discretion and decline to enter
ajudgment on priority against Mosley, notwithstanding Mosley's failure to serve evidence on priority
or derivation. Priority and derivation are determined based on a count representing a patentable
invention claimed by each party. It is fimdamental that the count must be patentable over the prior
art. Due to the unpatentability of each party's claims, on the record before us, there is no basis for
formulating a count directed to patentable subject matter. Without a proper count, there simply
cannot be any priority determination. To award ajudgment on priority for failure of Mosley to serve
a priority case would, under the circumstances of this case, exhort form over substance.
JUDGMENT
it is
ORDERED that judgment as to the subject matter of Count 2 (Paper 90) is awarded against
the junior party ELLEN MOSLEY, RAYMOND K. WHITBY and VERA OWEN;
FURTHER ORDERED thatjunior party, ELLEN MOSLEY, RAYMOND K. WHITBY and
VERA OWEN is not entitled to a patent containing claims I -10 (corresponding to Count 2) of Patent
5,752,945;
FURTHER ORDERED thatjudgment as to the subject matter of Count 2, is awarded against
the senior party RICHARD N. DODGE, 11, CLIFFORD J. ELLIS, CONNIE L. HETZLER, ERIC
S. KEPNER, SYLVIA B. LITTLE, LAWRENCE H. SAWYER and CANDACE D.
KRAUTKRAMER;
FURTHER ORDERED that senior party, RICHARD N. DODGE, 11, CLIFFORD J. ELLIS,
CONNIE L. HETZLER, ERIC S. KEPNER, SYLVIA B. LITTLE, LAWRENCE H. SAWYER and
3 Our statement should not be construed as an order to the examiner to allow amendment of the
claims at this late stage of the prosecution. Whether further amendment shall be allowed in Dodge's application is
left to the sound discretion of the examiner.
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CANDACE D. KRAUTKRAMER, is not entitled to a patent containing claims 25-29 (corresponding
to Count 2) of Application 09/314,492;
FURTHER ORDERED that if there is a settlement agreement and it has not already been
filed, attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661; and
FURTHER ORDERED that a copy of this opinion and the attached GB Patent 2,272,859A
be given a file number and be placed in the files of Patent 5,752,945 and Application 09/314,492.
9 Z ý F6,Z--.f
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1(CH A R AE. S, CHAFER
A inistrative Patent Judge
BOARD OF PATENT
64AMtSON LEE
Administrative Patent Judge APPEALS AND
)INTERFERENCES
CAROL A. SPfEtEL"
Administrative Patent Judge
cc (via Facsimile and First Class Mail):
Attorney for MOSLEY: Attorney for DODGE:
Stephen D. Geimer Henry L. Brinks, Esq.
WOOD, PHILLIPS, KATZ, CLARK & BRINKS HOFER GILSON & LIONE
MORTIMER 455 N. Cityfiont Plaza Drive
500 West Madison St. NBC Tower - Suite 3600
Suite 3800 Chicago, IL 60611
Chicago, 1L 60661-2511 Fax: 312-321-4299
Fax: 312-876-2020
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