Hoshino et alv.Tanaka

Board of Patent Appeals and Interferences

Sep 30, 1998

07573270 (B.P.A.I. Sep. 30, 1998)

Application 07/245,967, filed September 16, 1988, now1
Patent No. 4,841,325, issued June 20, 1989; and Reissue appli-
cation 08/204,661, filed March 2, 1994. Both applications are
accorded the benefit of application 07/005,241, filed January
20, 1987, and Japanese application JP61-012391, filed January
22, 1986.
Application 07/573,270, filed August 27, 1990. Accorded2
the benefit of applications 07/453,170, filed December 26,
1989, 07/193,218, filed May 11, 1988, and 06/913,343, filed
September 30, 1986. Also accorded the benefit of Japanese
applications 61-058453, filed March 17, 1986, and 60-219521,
filed October 2, 1985.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 106
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

KUNIHISA HOSHINO, DECEASED, BY CHIE HOSHINO,
LEGAL REPRESENTATIVE, YOSHINARI HAMANISHI,
and KEN UTAGAWA
Junior Party,1
v.
TSUNEFUMI TANAKA
Senior Party.2

Patent Interference No. 103,208

Before STONER, Chief Administrative Patent Judge, PATE and
Interference No. 103,208
Hoshino et al. v. Tanaka
- 2 -
LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
FINAL DECISION
In this interference, junior party Hoshino et al.
(Hoshino) relies solely on the earlier filing dates of
previously filed United States and Japanese applications to
which it claims benefit, to establish the case for priority.
For party Hoshino, the earliest accorded benefit date is
January 22, 1986 (based on the Administrative Patent Judge’s
granting of Hoshino’s motion for benefit). For party Tanaka,
the earliest accorded benefit date is October 2, 1985 (based
on the Administrative Patent Judge’s granting of Tanaka’s
motion for benefit).
At final hearing, the parties seek review only of the
Administrative Patent Judge (APJ)’s decision on various
preliminary and miscellaneous motions filed by the parties.
On September 12, 1995, the APJ issued a decision on
motions which decided party Hoshino’s motions H1 through H7
and party Tanaka’s motions T1 through T12. For clarification
purposes, the list of motions decided by the APJ is
Interference No. 103,208
Hoshino et al. v. Tanaka
- 3 -
reproduced below:
H1 Hoshino et al.'s motion (Paper No. 13) under
37 CFR § 1.633(h) to add reissue application
08/204,661 of Hoshino et al.'s involved patent
to this interference. (Unopposed)
H2 Hoshino et al.'s motion (Paper No. 14) under
37 CFR § (c)(1) to add proposed counts 2, 3 and
4; under 37 CFR § 1.633(c)(3) to designate
various claims of both parties as corresponding
to proposed counts 2-4; under 37 CFR §
1.633(c)(4) to
designate various claims of both parties as
not corresponding to count 1; and under 37
CFR § 1.633(c)(5) to require Tanaka to add
claims 40-53. (Opp. Paper No. 22) (Reply
Paper No. 44)
H3 Hoshino et al.'s motion (Paper No. 16) under
37 CFR § 1.633(f) for benefit of parent
application 08/005,241 (January 20, 1987) and
Japanese application 61-12391 (January 22,
1986). (Unopposed)
H4 Hoshino et al.'s contingent motion (Paper
No. 17) under 37 CFR § 1.633(c)(3) to
alternatively designate certain claims to
various proposed counts 2, 3 and 4. (Opp. Paper
No. 25) (Reply Paper No. 45)
H5 Hoshino et al.'s motion (Paper No. 34) to excuse
delay in opposing Tanaka's motion for benefit.
(Opp. Paper No. 53) (Reply Paper No. 66).
H6 Hoshino et al.'s contingent motion (Paper
No. 41) under 37 CFR §§ 1.633(f) and (j) to
obtain the benefit of U.S. Application
Interference No. 103,208
Hoshino et al. v. Tanaka
- 4 -
07/005,241 and Japanese application 61-12391.
(Unopposed)
H7 Hoshino et al.'s motion (Paper No. 12) under 37
CFR § 1.633(a) that Tanaka's claims 34-39 are
unpatentable to Tanaka. (Unopposed)
T1 Tanaka's Motion for Benefit under 37 CFR
§ 1.633(f) (Paper No. 9), of the filing dates of
Japanese applications 61-058453 (March 17, 1986)
and 60-219521 (October 2, 1985). (Opp. Paper
No. 35) (Reply Paper No. 54)
T2 Tanaka's Motion to Redefine I, under 37 CFR
§ 1.633(c)(2) and (i) by amending his claims 34-
38 and by canceling his claim 39. (Paper No.
24) (Opp. Paper No. 42) (Reply Paper No. 59)
T3 Tanaka's Motion to Redefine II, under 37 CFR §
1.633(c)(1) and (c)(2), by substituting proposed
count T-1 for count 1 and adding Tanaka's
claims 54 and 55, and Contingent Motion to
Add Count T-1. (Paper No. 23) (Opp. Paper
No. 43) (Reply Paper No. 57)
T4 Tanaka's contingent motion under 37 CFR
§ 1.633(c)(3) to designate claims 30-32 of
Hoshino et al.'s reissue application 08/204,661
as not corresponding to count 1. (Paper No. 26)
(Opp. Paper No. 36) (Reply Paper No. 56)
T5 Tanaka's contingent motion (Paper No. 27) under
37 CFR § 1.633(a) for judgment on the ground
that Hoshino et al.'s reissue application claims
18-33 are unpatentable to Hoshino et al. (Opp.
Paper No. 39)
T6 Tanaka's motion (Paper No. 28) under 37 CFR
Interference No. 103,208
Hoshino et al. v. Tanaka
- 5 -
§ 1.633(a) for judgment that involved patent
claim 17 of Hoshino et al is unpatentable to
Hoshino et al. (Unopposed)
T7 Tanaka's contingent motion under 37 CFR
§ 1.633(f) for benefit of Japanese applications
60-219521 and 61-058543. (Paper No. 29) (Opp.
Paper No. 37) (Reply Paper No. 58)
T8 Tanaka's motion (Paper No. 31) to excuse delay
in filing certain preliminary motions. (Opp.
Paper No. 38) (Reply Paper No. 55).
T9 Tanaka's contingent motion under 37 CFR
§ 1.633(c)(4) to redefine by designating
Tanaka's claims 6, 8-11, 13 and 14 as not
corresponding to count 1 or any count. (Paper
No. 30) (Opp. Paper No. 43)
T10 Tanaka's motion or request for returning Hoshino
et al.'s reply and accompanying second
declaration of Ken Utagawa to Tanaka's
opposition to Hoshino et al.'s Motion H2.
(Paper No. 60) (Opp. Paper No. 65) (Reply Paper
No. 72).
T11 Tanaka's contingent motion (Paper No. 70) under
37 CFR § 1.633(c)(5) to require Hoshino et al.
to
add back to Hoshino et al.'s reissue
application cancelled claims 30-32. (Opp.
Paper No. 71)
T12 Tanaka's motion to excuse delay (Paper No. 69)
in filing Tanaka's contingent motion to require
Hoshino et al. to add back to Hoshino et al.'s
reissue application cancelled claims 30-32.
Interference No. 103,208
Hoshino et al. v. Tanaka
The APJ added Hoshino's reissue application but ruled 3
that all claims correspond to count 1, not proposed new count
2, 3, or 4. The APJ added claims 40-53 to Tanaka's
application but held that they correspond to count 1, not
proposed new counts 2, 3 and 4.
The APJ designated Tanaka's amended claims 34-38 as4
(continued...)
- 6 -
(Unopposed)
In addition to the foregoing motions, the APJ’s decision
also ruled that party Hoshino’s preliminary statement was not
in compliance with 37 CFR § 1.622(b) and thus party Hoshino is
deemed as not having filed a preliminary statement. On that
ground, the APJ included an order for party Hoshino to show
cause why judgment should not be issued against the junior
party, for not having filed a preliminary statement.
Hoshino seeks (Paper No. 77) review of:
1. The denial-in-part of Hoshino’s motions H1 and H2.3
2. The denial of Hoshino’s motion H5.
3. The granting of Tanaka's motions T1, T2, and T5.4
Interference No. 103,208
Hoshino et al. v. Tanaka
(...continued)4
corresponding to count 1, not proposed new count 2, 3, or 4.
- 7 -
4. The sua sponte holding that Hoshino is deemed as not
having filed a preliminary statement.
Tanaka does not seek review of any decision of the APJ
(Paper No. 80). However, Tanaka submits that if our final
decision causes any of the contingencies encompassed by its
contingent motions T3, T4, T7, T9, and T11 to materialize,
then the Board should consider those motions, now dismissed by
the APJ, on the merits.
Opinion
The following issues will be addressed first, before our
discussion of the main issues in this case, i.e., whether
there should be one count or multiple counts, and which claims
of the parties should correspond to the sole count or each of
the multiple counts:
1. Hoshino’s preliminary statement.
2. Hoshino’s reissue and supplemental reissue
declarations.
Tanaka’s motion (T5) for judgment.
3. Hoshino’s motion (H5) to excuse the delay in opposing
Tanaka’s motion (T1) for benefit of the earlier
filing date of Japanese application 60-219521.

Junior Party Hoshino’s
Interference No. 103,208
Hoshino et al. v. Tanaka
- 8 -
Preliminary Statement
The APJ is correct that Hoshino’s preliminary statement
is not in compliance with 37 CFR § 1.622(b) which requires
that the preliminary statement state whether the invention was
made in the United States, a NAFTA country (and which NAFTA
country), a WTO member country (and which one), or in a place
other than the United States, a NAFTA country, or a WTO member
country. No such statement is contained in party Hoshino’s
preliminary statement. But where the party does not seek to
introduce evidence of actual reduction to practice, as is the
case with party Hoshino, the omission is harmless or
inconsequential and thus the APJ abused
his discretion in holding that party Hoshino is deemed as not
having filed a preliminary statement.
The sufficiency of the reissue
declarations of party Hoshino’s
reissue application 08/204,661
Tanaka’s contingent motion for judgment (T5) asserts that
claims 18-33 in Hoshino’s reissue claims 18-33 are
unpatentable for lack of an adequate reissue declaration. The
APJ granted this motion, on the ground that the reissue
declaration and supplemental reissue declaration do not
Interference No. 103,208
Hoshino et al. v. Tanaka
- 9 -
adequately set forth how the alleged error in Hoshino’s
patent arose or occurred.
We cannot sustain the APJ’s decision on this motion.
The APJ abused his discretion in holding that Hoshino’s
reissue declaration failed to particularly specify how the
alleged error in the original patent arose or occurred. The
error, as clearly specified in the reissue declaration, is the
failure to include the narrower claims. How the error arose
or occurred, as specified in the reissue declaration and
supplemental reissue declaration (filed with Hoshino’s
opposition to Tanaka’s motion for judgment), is by failure of
the inventors and representatives of the assignee to
appreciate that the broader original claims may be lost in an
interference contest. The APJ erred in requiring more
specific facts, given that no evidence in the record has been
alluded to which suggests
that deceptive intention is involved with respect to Hoshino.
It is true, as the APJ correctly recognized, that a concern
for the potential of losing a broad claim in an interference
Interference No. 103,208
Hoshino et al. v. Tanaka
- 10 -
priority contest can be just as legitimate as a concern for
the potential of losing the broad claim on the basis of prior
art.
The APJ also erred in discrediting the reissue
declaration on the basis that it was not executed and signed
by the inventors themselves but by an officer of the assignee.
As Hoshino correctly points out, 37 CFR § 1.172(a)
specifically provides that "a reissue oath may be made and
sworn to or declaration made by the assignee of the entire
interest if the [reissue declaration] does not seek to enlarge
the scope of the claims of the original patent."
Hoshino’s motion to excuse the delay in
opposing Tanaka’s motion for benefit of the
filing date of Japanese application 60-219521
On March 2, 1994, Tanaka filed a motion (T1) (Paper No.
9) for benefit of Japanese applications 60-219521 (October 2,
1985) and 61-058453 (March 17, 1986). No opposition to this
Tanaka motion for benefit was filed by party Hoshino during
the period for filing such opposition. On September 21, 1994,
more than six months after the filing of Tanaka’s motion for
benefit, Hoshino filed a motion (Paper No. 34) to excuse delay
in opposing Tanaka’s motion for benefit, accompanied by the
Interference No. 103,208
Hoshino et al. v. Tanaka
- 11 -
belated opposition (Paper No. 35).
According to Hoshino, it was an assertion in Tanaka’s
opposition to Hoshino’s motion to redefine the count, which
provided an excuse for Hoshino to file a belated opposition to
Tanaka’s motion for benefit. Hoshino argues that in Tanaka’s
opposition to Hoshino’s motion to redefine the count, it was
stated that one with ordinary skill would find it "inherent"
in the count that the conversion coefficient would be
corrected by utilizing both the magnitude and the sign of the
defocus. Thus, according to Hoshino, if the count were to be
regarded as requiring that the conversion coefficient be
corrected by using both the magnitude and sign of the defocus
amount, then Tanaka would not be entitled to benefit of the
Japanese applications.
Like the APJ, we have difficulty comprehending the logic
of Hoshino’s position. At best, if the APJ in fact ruled,
contrary to Hoshino’s view, that the count required the
correction of the
conversion coefficient be based on both the magnitude and sign
Interference No. 103,208
Hoshino et al. v. Tanaka
- 12 -
of the defocus amount, Hoshino may reasonably argue that
Hoshino should get a new chance to oppose Tanaka’s motion for
benefit, while applying the APJ’s view of the count. However,
the APJ made no such determination. Indeed, on page 17 of the
APJ’s decision on preliminary motions, the APJ expressly
stated that he has not construed the count that way, i.e.,
requiring that the
conversion coefficient be corrected by using both the
magnitude and sign of the defocus amount.
In the absence of a contrary determination from the APJ
as to what the count actually requires, Hoshino must oppose or
not oppose Tanaka’s motion for benefit, based on Hoshino’s own
interpretation of the count. What Tanaka allegedly thinks of
the count in the context of another paper, i.e., Tanaka’s
opposition to Hoshino’s motion to redefine the count, has no
bearing on and cannot properly influence whether Hoshino
should, in the first instance, oppose Tanaka’s motion for
benefit.
Furthermore, in opposing Hoshino’s motion to excuse
delay, Tanaka made clear on page 5 of the opposition that it
too does not interpret the count as requiring an apparatus
Interference No. 103,208
Hoshino et al. v. Tanaka
- 13 -
that deals with "bi-directional defocus" (considering both the
magnitude and sign of the defocus amount). Specifically,
Tanaka stated on page 5 of the opposition: "To the contrary,
Count 1 is broad enough
to encompass apparatuses dealing with uni-directional or bi-
directional defocus." Tanaka further explained that the word
"inherent" as used in Tanaka’s opposition to Hoshino’s motion
to redefine the count was used to indicate what one with
ordinary skill would surely have known to consider in the case
of a camera having a lens that moves in both directions, and
not to suggest that the count necessarily requires bi-
directional defocus.
In any event, even assuming that Tanaka has taken the
view that the count requires both the magnitude and sign of
the defocus amount to be considered in correcting the
conversion coefficient, which Tanaka denies, Hoshino can
merely argue against that interpretation of the count. Until
the APJ or the Board agrees with the view allegedly taken by
Tanaka, the circumstance does not give Hoshino a new
Interference No. 103,208
Hoshino et al. v. Tanaka
- 14 -
opportunity to oppose Tanaka’s previously filed and unopposed
motion for benefit.
We wholly agree with the following assessment of the APJ:
Such interpretation [that the conversion coefficient
be corrected by using both the magnitude and sign of
the defocus amount] which no one admits or agrees
to, can be no basis for Hoshino et al. to justify a
belated opposition to Tanaka’s motion for benefit.
Because Hoshino’s belated opposition to Tanaka’s motion
(T1) for benefit is not excused, we do not consider Hoshino’s
arguments why Tanaka should not be accorded the benefit of
Japanese application 60-219521. It suffices to say only that
the
APJ considered the substance of Tanaka’s motion for benefit
and deemed the arguments of Tanaka to be persuasive. We have
no occasion to review Tanaka’s motion (T1) for benefit
de novo. Accordingly, Tanaka is entitled to benefit of
Japanese application 61-058453 and 60-219521's respective
filing dates of March 17, 1986 and October 2, 1985.
Hoshino’s motion H2 to add proposed
new counts 2, 3, and 4 and to designate
various claims as corresponding or
not corresponding to counts 1, 2, 3, and 4
Interference No. 103,208
Hoshino et al. v. Tanaka
- 15 -
The APJ denied Hoshino’s motion (Paper No. 14) to add
proposed new counts 2, 3, and 4. That decision is presumed
to have been correct and the burden of showing an abuse of
discretion is upon the party attacking the order. 37 CFR
§ 1.655(a). An abuse of discretion occurs if the decision
"(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
based on an erroneous conclusion of law; (3) rests on clearly
erroneous fact findings; or (4) involves a record that
contains no evidence on which the Board could rationally base
its decision." Abrutyn v. Giovanniello, 15 F.3d 1048, 1050-
51, 29 USPQ2d 1615, 1617 (Fed. Cir. 1994).
Before the APJ, a moving party bears the burden of proof
that it is entitled to the relief sought. Kubota v. Shibuya,
999 F.2d 517, 520, 27 USPQ2d 1418, 1421 (Fed. Cir. 1993);
Patent
Interference Practice Burden of Proof - Final Rule, 58 Fed.
Reg. 49432, 1155 O.G. 65, 67 (October 19, 1993). Case v. CPC
Int’l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir.),
cert. denied, 105 S.Ct. 223, 224 USPQ 736 (1984).
Interference No. 103,208
Hoshino et al. v. Tanaka
- 16 -
The APJ correctly stated that the burden is on Hoshino to
demonstrate separate patentability of the proposed counts, and
not on Tanaka to demonstrate lack of separate patentability.
The
APJ denied Hoshino’s Motion H2 on the basis that Hoshino
failed to demonstrate separate patentability of the proposed
new counts. The APJ expressly stated (Decision at 9) that his
decision on Hoshino’s Motion H2 was reached without reliance
on the evidence submitted by Tanaka in support of Tanaka’s
opposition to Motion H2, i.e., the Larky and Fisher
declarations. The APJ also held that evidence accompanying
Hoshino’s reply could not bolster inadequate showings in
Hoshino’s prima facie case for relief.
The APJ did not specifically discuss the evidence submitted by
Hoshino in a reply to Tanaka’s opposition to Motion H2.
On page 7 of the attachment to the notice declaring the
interference, the parties were specifically reminded that:
With respect to all motions brought under the
new interference rules, the moving party bears the
burden of making out a prima facie case of
entitlement to the relief sought. Kubota v.
Shibuya, ___ F.2d ____, 17 USPQ2d 1418, 1422-23
(Fed. Cir. 1993); Patent Interference Practice
Burden of Proof - Notice of Proposed Rulemaking, 58
Fed. Reg. 528 (Jan. 6, 1993), 1147 O.G. 11 (Feb. 2,
Interference No. 103,208
Hoshino et al. v. Tanaka
- 17 -
1993).
On the same page of the same attachment, the parties were
also specifically warned that:
The parties are required to present all
available relevant evidence on which they intend to
rely with the motion, opposition or reply unless the
evidence is already part of the interference file or
the file of an involved application or patent
[footnote omitted] or unless they can demonstrate
that a decision on the motion should be deferred
until final hearing [footnote omitted].
Furthermore, evidence submitted in support of a
motion must be filed with the motion, not the reply.
See Irikura v. Peterson, 18 USPQ2d 1362, 1368 (BPAI
1990):
A good faith effort must be made to submit
evidence to support a preliminary motion or
opposition when the evidence is available.
Orikasa v. Oonishi, [10 USPQ2d 1996, 2000
n.12 (Comm’r Pats. 1989)]. Note the
commentary [Final Rule Notice] 49 F.R.
48424, at 48442, . . . 1050 O.G. 393 at
411.
It is evident that the APJ determined that Hoshino’s
Motion H2 failed to make out a prima facie basis for relief.
Because we are of the view that Hoshino’s Motion H2
failed to set forth a prima facie basis for relief, the APJ
did not abuse his discretion in denying Hoshino’s Motion H2 to
add proposed new counts 2, 3, and 4.
Background facts
Interference No. 103,208
Hoshino et al. v. Tanaka
- 18 -
The invention of the count is directed to a camera or
photographing lens capable of performing automatic focusing.
(Count 1. Hoshino Patent. Tanaka application.)
The prior art includes autofocus cameras in which the
defocus amount, i.e., the deviation of the plane on which the
image is actually formed from a predetermined focal plane, is
determined and then the focusing lens is moved by a lens
driving means such as a motor according to the determined
defocus amount. (Hoshino patent, column 1, lines 16-27.)
In such preexisting cameras, the relationship between the
lens driving amount and the defocus amount is defined by a
conversion coefficient K which is a constant. (Hoshino
patent, column 1, lines 28-36).
Both Hoshino and Tanaka propose using a corrected
coefficient which is not a constant, rather than a conversion
coefficient which is a constant. (Hoshino patent, column 1,
line 68 to column 2, line 9, and column 3, lines 8-18; Tanaka
application, pages 12-13).
According to Hoshino, this corrected coefficient is
defined by the formula K (1 + C x Å’Bf) where K is the0 0 0
original conversion coefficient, C is a correction0
Interference No. 103,208
Hoshino et al. v. Tanaka
- 19 -
coefficient, and Å’Bf is the defocus amount. (Hoshino patent,
column 4, lines 12-39).
According to Tanaka, this corrected coefficient is called
S and is determined by the formula: S = S + A x f(Å’d) whered d 0
S represents the original constant conversion coefficient0
(like K in Hoshino’s patent), A is a correction coefficient0
like Hoshino’s C , and f(Œd) represents a function of the0
focus deviation Œd (like the defocus amount ŒBf in Hoshino’s
patent). (Tanaka application, pages 12-13).
Discussion
At issue before us is whether Hoshino’s Motion H2,
together with the evidence submitted therewith, is sufficient
to make out a prima facie basis for the relief sought. We
conclude, for reasons discussed in more detail below, that it
does not. Like
the APJ did in rendering the decision on motions, we have not
considered the new points contained in and the evidence
submitted
with Tanaka’s opposition to Hoshino’s Motion H2. Accordingly,
Hoshino’s reply and evidence submitted with the reply need not
be and have not been considered. Per 37 CFR § 1.638(b)(1993),
Interference No. 103,208
Hoshino et al. v. Tanaka
- 20 -
"[a] reply shall be directed only to new points raised in the
opposition." To the extent that Hoshino believes that Motion
H2 itself makes out a prima facie basis for relief, we
disagree.
In order to add a count to the interference, party
Hoshino must demonstrate that the newly proposed count defines
a separately patentable invention relative to original count
1. According to count 1, the "corrected conversion
coefficient" representing a relationship between the lens
driving amount and the detected amount of defocus is
determined on the basis of three factors:
(1) the conversion coefficient, (2) the
correction coefficient, and (3) the detected amount
of defocus.
Hoshino’s proposed count 2 differs from count 1 by
specifically and particularly reciting that the corrected
conversion coefficient is determined in accordance with a
formula that depends on both the magnitude and sign of the
detected amount of defocus.
Hoshino’s proposed count 3 differs from count 1 by
specifically and particularly reciting that the formula for
Interference No. 103,208
Hoshino et al. v. Tanaka
- 21 -
determining the corrected conversion coefficient has a first
order term of the detected amount of defocus and also depends
on both the magnitude and sign of the amount of defocus.
Hoshino’s proposed count 4 differs from count 1 by
specifically reciting that the formula for determining the
corrected conversion coefficient has both a first order term
and a higher order term of the detected amount of defocus,
with the first order term including a first correction
coefficient and the higher order term including a second
correction coefficient.
Per 37 CFR § 1.601(n), the standard for determining
separately patentable invention is the same as obviousness
under 35 U.S.C. § 103.
Hoshino’s Motion H2 is accompanied by a single supporting
declaration of a co-inventor of Hoshino’s involved patent, Ken
Utagawa (first Utagawa declaration). The declaration has five
items attached thereto, i.e., Exhibits A, B, C, and D, and a
curriculum vitae of Mr. Utagawa. That Mr. Utagawa is an
expert in the design of autofocus cameras has not been
disputed by
Interference No. 103,208
Hoshino et al. v. Tanaka
- 22 -
senior party Tanaka. In this first declaration, Mr. Utagawa
makes three points which are especially pertinent to the issue
of adding proposed new counts 2, 3, and 4:
(1) (pages 2-3) [W]hen focusing is based on a
corrected conversion coefficient K determined in
accordance with a formula having a first order term
of the detected amount of defocus, there is a
substantial improvement
in the accuracy of focusing, as compared to focusing
based on a corrected conversion coefficient
determined
in accordance with a formula that lacks a first
order term of the detected amount of defocus. For
example, a formula that has merely a second order
term of the detected amount of defocus produces a
substantial error in the corrected conversion
coefficient, as is apparent from a comparison of
line M1 and the second order curve superimposed on
Fig. 3 in Exhibit A.
(2) (pages 3-4) [W]hen the calculating means
determines the corrected conversion coefficient in
accordance with a formula having a first order term
of the detected amount of defocus and that depends
on both the magni- tude and the sign of the detected
amount of defocus, there is a substantial
improvement in focusing accu- racy, as compared with
focusing based on a corrected conversion coefficient
determined in accordance with a formula that
produces the same corrected conversion coefficient
regardless of the sign of the detected amount of
defocus. This is apparent in Fig. 3 of Exhibit B
attached hereto in which the first order dash line
M1' (producing the same value of K regardless of the
sign of Å’Bf) shows a substantial error (divergence
from line M1) in determination of the corrected
conver- sion coefficient K for -Å’Bf. Similarly, in
Exhibit A, there is a substantial error when the
Interference No. 103,208
Hoshino et al. v. Tanaka
- 23 -
corrected con- version coefficient K is determined
in accordance with a second order curve that
produces the same value of K for -Å’Bf as for +Å’Bf.
(3) (pages 4-5) By employing two (or more)
correction coefficients in determining the corrected
conversion coefficient, improved focusing accuracy
is obtained, since the corrected conversion
coefficient (K) can be calculated more precisely.
(Page 5) More accurate focusing can be achieved
with such a formula [a first order and a higher
order term of the detected amount of defocus, having
respective first and second correction
coefficients], because the corrected conversion
coefficient can be calculated more precisely when
accounting for the fact that the relationship
between the corrected conversion coefficient and the
detected amount of defocus is not entirely a
straight-line relationship in some lens systems.
We have many problems with Hoshino’s arguments and
evidence, as was presented in motion H2, in support of the
contention that each of the proposed new counts 2, 3, and 4,
represents a separately patentable invention, i.e., an
invention that is patentably distinct, from count 1.
An expert’s affidavit, if it presents mere conclusions
and few facts to buttress the opinions proffered, fails in its
purpose, and is entitled to little weight. See, e.g., In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973). Note also the following statement of the Court of
Appeals for the Federal Circuit in Rohm and Haas Co. v.
Interference No. 103,208
Hoshino et al. v. Tanaka
- 24 -
Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed.
Cir. 1997): "Nothing in the rules or in our jurisprudence
requires the fact finder to credit the unsupported assertions
of an expert witness." Mr. Utagawa’s above-quoted statement
merely asserts, in a conclusory manner, that a "substantial
improvement" is achieved, without describing the actual
systems used, if any, or revealing
the raw test data, if any. No specific test with particular
components has been identified. It is not known whether the
alleged improvement is achieved with one, two, several, or
many types of actual optical systems.
Moreover, the attachment to the notice declaring the
interference warned the parties not only that evidence in
support
of a preliminary motion must be submitted together with the
motion and not with the reply, but also that (page 8):
A party offering affidavit testimony by an
alleged expert must establish that the affiant is an
expert in the sense of Rule 702 of the Federal Rules
of Evidence. Expert opinion testimony pursuant to
Fed. R. Evid. 703 is entitled to weight only to the
extent the underlying factual basis is provided in
Interference No. 103,208
Hoshino et al. v. Tanaka
- 25 -
the affidavit. Cable Electric Prod. v. Genmark, 770
F.2d 1015, 226 USPQ 881, 887 (Fed. Cir. 1985).
(Emphasis added.)
Further still, it is anyone’s guess how much improvement
constitutes a "substantial improvement." Since we do not know
how much improvement constitutes "substantial improvement,"
the assertion of substantial improvement is not very
meaningful. The Figures referred to in Exhibits A and B
attached to Mr. Utagawa’s first declaration are not marked
with specific units on any axis in the graphs and do not
appear to record actual test data. Rather, they appear to be
graphical illustrations or translations of what Mr. Utagawa
has said in words and are just as conclusory. Saying the same
thing twice, albeit in different forms, does not
make an unsubstantiated conclusion any more believable or con-
vincing. Also, here, the fact that Mr. Utagawa is a co-
inventor makes lack of presentation of the underlying factual
basis and specific data in support of Mr. Utagawa’s opinion
even a little more suspect.
Even assuming that substantial improvements are shown,
Interference No. 103,208
Hoshino et al. v. Tanaka
- 26 -
whatever that is, and further assuming that the improvement is
with respect to all types of optical systems, it should be
noted that it is only "unexpected" beneficial results which
are an objective indicia of nonobviousness, see, e.g., In re
Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991), In re De Blauwe, 736 F.2d 699, 705, 222 USPQ
191, 196 (Fed. Cir. 1984), and not any "expected" beneficial
results. To the contrary, expected beneficial results are
strong evidence of obviousness of the claimed invention, just
as unexpected beneficial results are evidence of
unobviousness. In re Skoll, 523 F.2d 1392, 1397, 187 USPQ
481, 484 (CCPA 1975); In re Skoner, 517 F.2d 947, 950, 186
USPQ 80, 82 (CCPA 1975); In re Gershon, 372 F.2d 535, 537, 152
USPQ 602, 604 (CCPA 1967).
Mr. Utagawa’s declaration accompanying Motion H2 nowhere
asserts, much less establishes or demonstrates that the so-
called "substantial improvements" or mere improvements are
unexpected. We decline to simply assume that the alleged
improvements are or
Interference No. 103,208
Hoshino et al. v. Tanaka
- 27 -
would have been unexpected to one with ordinary skill in the
art. That important fact has to be alleged and established by
Hoshino as the moving party, if Hoshino relies on beneficial
results as an indicia of nonobviousness.
To the extent that Hoshino’s Motion H2 does, only with
respect to proposed new count 2, allege that the improvement
would not have been obvious to one with ordinary skill in the
art, note that (1) argument of counsel does not take the place
of evidence, Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d
588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997); Meitzner v.
Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA), cert.
denied, 434 U.S. 854 (1977); In re Pearson, 494 F.2d 1399,
1405, 181 USPQ 641, 646 (CCPA 1974), (2) nonobviousness does
not equate to unexpectedness since something nonobvious is not
necessarily surprising, and (3) when unexpected results are
asserted, it must be shown by comparison of the claimed
invention's results with the result obtained by the closest
prior art. In re Baxter Travenol Labs, 952 F.2d at 392, 21
USPQ2d at 1285; In re De Blauwe, 736 F.2d at 705, 222 USPQ at
196. Here, no specific information accompanied the first
Utagawa declaration to show what particular tests were made
Interference No. 103,208
Hoshino et al. v. Tanaka
- 28 -
and what the actual results were.
Consequently, all of Hoshino’s conclusory assertions of
improvement, in the motion, do not help to establish
nonobvious- ness in a meaningful way. Our opinion should not
be read as saying that unexpected results are necessary to
show nonobvious- ness. Rather, we simply note that Hoshino’s
motion H2 did not, with respect to the proposed new counts,
assert and present evidence of "unexpected results," an
objective indicia of nonobviousness, which if shown, can help
to demonstrate nonobviousness.
Additionally, it would appear that given the general
recitation of count 1, i.e., that the corrected conversion
coefficient is determined on the basis of the detected amount
of defocus, one with ordinary skill in the art would have
appreciated that some results would be better than others
depending on the precise calculation formula used. And
because count 1 specifically mentions the amount of defocus as
a factor and not the amount of defocus squared, cubed, or
raised to any other higher order, it is more plausible that
given count 1 one would naturally expect better results with
formulas having a first order term of the detected amount of
Interference No. 103,208
Hoshino et al. v. Tanaka
- 29 -
defocus, if it is even assumed that there is any expectation
at all.
Also, because count 1 specifically mentions the amount of
defocus as a factor and not the amount of defocus squared,
cubed, or raised to any other higher order, there is at least
some motivation for one with ordinary skill in the art to
include a first order term of the defocus amount in the
formula. Note that
a first order term is almost precisely what the count
literally says. It takes additional cognitive figuring or at
least another mental step to realize that the count is not
limited only to formulas having a first order term of the
defocus amount.
With respect to separate patentability between proposed
new counts 2 and 3, we note that the statements of Mr. Utagawa
in the declaration accompanying Motion H2 do not demonstrate
anything meaningful with respect to the sign dependence
feature separate
and apart from the idea of having a first order term of the
Interference No. 103,208
Hoshino et al. v. Tanaka
- 30 -
defocus amount in the calculation formula. Specifically, if
the presence of a first order term of the defocus amount is
what causes a substantial improvement according to one part of
Mr. Utagawa’s declaration, then the improvement due to a
combination of having a first order term and dependence on the
sign of the defocus amount cannot be attributed solely to
dependence on the sign of the defocus amount. It should be
noted that a first order term of the defocus amount
necessarily attributes signifi- cance to the sign of the
defocus amount. Unlike the case with terms raised to an even
number power, the sign is not lost with a first order term.
For these reasons, Motion H2 has not sufficiently
distinguished proposed new count 2 from proposed new count 3.
With respect to proposed new count 4, Mr. Utagawa
essentially states that using an additional higher order term
together with a first order term of the detected amount of
defocus yields further improvement because in some lens
systems the relationship between the corrected conversion
coefficient and the detected amount of defocus is not entirely
a straight-line (linear) relationship. It is implicit that at
least in some lens systems the relationship is strictly linear
Interference No. 103,208
Hoshino et al. v. Tanaka
- 31 -
and no meaningful improvement would be achieved by the
addition of a higher order term of the defocus amount to the
formula for calculating the corrected conversion coefficient.
But none of count 1 or proposed new counts 2, 3, and 4, is
limited to any particular type of lens system. Thus, the
assertion of improvement is not commensurate in scope with
proposed new count 4.
Given count 1 which recites that the corrected conversion
coefficient is calculated on the basis of the detected defocus
amount and which does not exclude higher order terms, that
higher order terms may be present to accompany a first order
term of the defocus amount follows from a straight reading of
count 1 and thus would be readily appreciated by one with
ordinary skill in the art who is presumed to possess basic
reading skills and certain level common sense. See, e.g., In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
The parties should not overlook or lose sight of the fact
that insofar as Hoshino’s Motion H2 is concerned, Hoshino must
Interference No. 103,208
Hoshino et al. v. Tanaka
- 32 -
successfully demonstrate separate patentability
(nonobviousness) of the proposed new counts with respect to
count 1 and each other. For an affirmance of the APJ’s denial
of Hoshino’s Motion H2, it is not necessary for us to conclude
that the proposed new counts would have been obvious with
respect to count 1.
In portions of its brief, Hoshino presents another line
of argument in support of the assertion that the proposed new
counts are separately patentable from count 1. In essence,
according to Hoshino (Hoshino brief at 14 and 31), even
Tanaka, an expert in the art of designing autofocus cameras,
in 1985 when he filed Japanese priority application 60-219521
(JP '521), did not think of a formula having a first order
term of the detected amount of defocus or utilizing the sign
of the defocus amount but instead, settled on a second order
function based on Å’d , i.e., S = S + A x Å’d .2 2d 0
Hoshino points out (Br. at 32-33) that it was Tanaka’s
second Japanese priority application which specifically judges
the sign (direction) of the defocus, so that the sign may be
utilized in calculating the corrected conversion coefficient.
According to Hoshino (Br. at 32), it was "months" after the
Interference No. 103,208
Hoshino et al. v. Tanaka
Tanaka’s first Japanese priority application 60-2195215
has a filing date of October 2, 1985. Tanaka’s second
Japanese priority application 61-058453 has a filing date of
March 17, 1986.
- 33 -
date of Tanaka’s first Japanese priority application, when
Tanaka filed the second Japanese priority application (61-
058453), that Tanaka recognized the need for considering the
sign of the
defocus amount in calculating the corrected conversion
coefficient.5
Hoshino also states (Br. at 39) that until the filing of
Tanaka’s involved United States application, Tanaka, "an
expert in designing autofocus cameras," did not even mention
[in the two Japanese priority applications] a formula
including a first order term of the defocus amount for
calculating the corrected conversion coefficient.
Hoshino’s line of argument based on what Tanaka did or
did not describe in the first and/or second Japanese priority
application was not presented in Hoshino’s original Motion H2
(Paper No. 14). Thus, the APJ could not have erred or abused
Interference No. 103,208
Hoshino et al. v. Tanaka
- 34 -
his discretion, on account of this new line of argument, in
determining that Hoshino failed to set forth a prima facie
basis for relief. In any event, however, Hoshino’s argument
is both speculative and presumptuous, and is rejected.
That Tanaka did not specifically describe using the sign
of the defocus amount until the second Japanese priority
application and a first order term of the defocus amount until
the instant directly involved U.S. application does not
demonstrate something
significant regarding the obviousness or unobviousness of
using the sign of the defocus amount or a first order term
thereof. In our view, it is without basis for Hoshino to
conclude that the reason Tanaka did not describe a particular
embodiment is that the embodiment was not obvious to Tanaka.
Tanaka’s first Japanese priority application may not contain a
written descrip- tion of Hoshino’s proposed new counts 2, 3,
and 4, but it is a long and fanciful stretch from there to
conclude that the lack of description demonstrates
nonobviousness to Tanaka.
Interference No. 103,208
Hoshino et al. v. Tanaka
- 35 -
Moreover, Hoshino does not dispute that Tanaka did
disclose, in the second Japanese priority application (61-
058453) a formula utilizing the sign of the defocus amount,
and in the involved U.S. application a formula utilizing a
first order term of the defocus amount. The most that can be
said is that Tanaka specifically described a formula using a
second order term of the defocus amount before he described a
formula using a first order term. There may be a countless
number of reasons that may account for that order of events,
only one of which is the possibility that it was not obvious
to Tanaka that the formula can include a first order term of
the defocus amount. There is and can be no rule that all
embodiments of an invention which is not described in the very
first patent application filed by the inventor in a series of
patent applications around the world are
presumed to have been unobvious to the inventor. Furthermore,
actual disclosure of the feature or features at issue in any
of Tanaka’s patent applications, e.g., the second Japanese
priority application or the involved U.S. application,
Interference No. 103,208
Hoshino et al. v. Tanaka
- 36 -
undermines Hoshino’s contention that the features were
unobvious to Tanaka. We note further that even Hoshino
recognizes (Br. at 39) that in Tanaka’s first Japanese
priority application there is a statement that higher order
equations may be employed. Indeed, on page 20 of the English
translation of Tanaka’s first Japanese priority application
60-219521 contained in the file of Tanaka’s involved
application, it is stated that a function other than the
second order function, "for example, a tertiary or higher-
order function" (emphasis added) can be adopted. Tertiary
means third order. The language suggests that Tanaka was
aware that third order equations may be used. A third order
equation, unlike a second order equation, does not ignore the
sign of the detected defocus amount. A number raised to the
third power preserves its original sign. These facts further
erode Hoshino’s argument about what was not obvious to Tanaka.
For all of the foregoing reasons, it is clear that
Hoshino’s Motion H2 has failed to set forth a prima facie case
that the proposed new counts 2, 3, and 4 define separately
patentable, i.e., patentably distinct, inventions with respect
to count 1.
Interference No. 103,208
Hoshino et al. v. Tanaka
- 37 -
Even if there had been no opposition from Tanaka, Hoshino’s
Motion H2 should have been denied by the APJ, as it was. The
APJ made clear that he did not consider the Larky and Fisher
declarations accompanying Tanaka’s opposition to Hoshino’s
Motion H2. The lack of a prima facie showing in Hoshino’s
Motion H2 is determined independent of any evidentiary showing
by Tanaka. The lack of specific factual basis for the
conclusions expressed in Mr. Utagawa’s first declaration, the
vagueness of what constitutes "substantial" improvement, and
the lack of showing for "unexpectedness," all serve to support
the APJ’s determination regardless of anything said in the
Larky and Fisher
declarations. We also agree with the following finding of the
APJ (Motions Decision at 8):
The APJ also finds that all of the alleged
substantial improvements in Ken Utagawa’s first
declaration are not supported by quantitative
experimental results. What is "substantial" to one
may not be substantial to another. And Hoshino et
al. have failed to establish the extent of any such
allegedly "substantial" improvement through
objective and specific experimental data.
Hoshino’s reply to Tanaka’s opposition is accompanied by
an additional declaration of Mr. Utagawa (second Utagawa
Interference No. 103,208
Hoshino et al. v. Tanaka
- 38 -
declaration), and also the declarations of Mr. Yoshiharu
Shiokama and co-inventor Yoshinari Hamanishi. In addition to
attacking the expert status of Tanaka’s witnesses Larky and
Fisher and the opinions of Larky and Fisher, the second
Utagawa declaration attempts to present, for the first time,
specific details of the underlying activities possibly
supporting the conclusory opinions in Utagawa’s first
declaration. The events and various projects leading up to
Mr. Utagawa’s forming his expert opinions and conclusions were
described, including the extent and variety of the optical
systems tested. Tables and graphs of specific data were
introduced in exhibits to the second Utagawa declaration. The
Shiokama declaration describes the nature and significance of
a certain table and graphs submitted together therewith for
various Nikon® and Canon® lenses. The Hamanishi declaration
states an opinion to support the opinions in the second
Utagawa
declaration. Also, the second Utagawa declaration mentioned,
for the first time, that a strong first order relationship was
"unexpected."
We cannot state more strongly that the time for Hoshino
Interference No. 103,208
Hoshino et al. v. Tanaka
- 39 -
to indicate any unexpectedness in the alleged beneficial
results is in its motion, not in a reply to Tanaka’s
opposition. We also cannot state with more emphasis that the
time for Hoshino to submit specific experimental or test data
to provide a factual basis for the mere assertion, in the
motion, of substantial beneficial results is in the motion,
not in a reply to Tanaka’s opposition.
The deficiencies in Hoshino’s prima facie case cannot be
remedied or repaired by way of a reply. The issues are
central to Hoshino’s claim for relief. The assertion of any
unexpected substantial beneficial results and the factual
basis for Mr. Utagawa’s opinions are undeniably a part of
Hoshino’s "case-in-chief" for Motion H2 and thus must be
raised or presented together with Hoshino’s Motion H2, if at
all, not in a reply. Hoshino assumes the risk that without
such crucial evidence and assertion of "unexpectedness," Mr.
Utagawa’s first declaration which was submitted with Motion H2
and the arguments contained in Motion H2 are inadequate to
support the relief requested in Motion H2, as we have
determined here. Note also 37 CFR § 1.639(a) (1993),
which states:
Interference No. 103,208
Hoshino et al. v. Tanaka
- 40 -
Proof of any material fact alleged in a motion,
opposition, or reply must be filed and served with
the motion, oppposition [sic], or reply unless the
proof relied upon is part of the interference file
or the file of any patent or application involved in
the interference or any earlier application filed in
the United States of which a party has been accorded
or seeks to be accorded benefit.
The exceptions clearly have no application here.
According to Hoshino (Br. at 25), the evidence submitted
with the reply and the arguments in the reply are properly
directed toward Tanaka’s opposition to Hoshino’s Motion H2 and
only "coincidentally" bolster Hoshino’s original showings for
establishing a prima facie case for relief. Also according to
Hoshino (Br. at 25), "coincidental" bolstering is not
improper.
We disagree. The bolstering cannot be proper and merely
"coincidental" where, as here, the original motion with the
first Utagawa declaration does not establish a prima facie
case for relief. Because Hoshino’s motion fails even without
our consideration and reliance on Tanaka’s opposition to the
motion, additional evidence cannot, under the disguise of a
reply, remedy the lack of a prima facie showing in the
Interference No. 103,208
Hoshino et al. v. Tanaka
- 41 -
original motion. The filing of an opposition does not provide
the movant a back door to submit evidence which should have
been submitted with the original motion. The omission is even
more inexcusable here, where 37 CFR § 1.639(a) and prior
explicit warning from the APJ placed the parties on notice
that evidence needed to support a
motion must be filed with the motion and not with the reply.
As we indicated earlier, the APJ further stated in advance to
the parties that with respect to all preliminary "motions" the
moving party bears the burden of establishing a prima facie
case of entitlement to relief. Also, 37 CFR § 1.638(b) states
that a reply shall be directed only to new points raised in
the opposition.
The Board has a substantial backlog in interference
cases. If a moving party’s original motion papers and
evidence in support of the motion do not demonstrate a prima
facie basis for relief, regardless of any opposition to the
motion, as we have
determined here, the motion should be denied and the movant
Interference No. 103,208
Hoshino et al. v. Tanaka
- 42 -
does not get an opportunity to complete a prima facie showing
by reliance on evidence submitted in the name of a "reply."
If such non-reply replies are considered and given weight, it
can give rise to at least a full round of surreply with
additional evi- dence for consideration and possibly even a
further reply to address new issues raised in the surreply. A
breakdown of the orderly procedure to present issues and
evidence for considera- tion occurs, causing confusion and
delay in the interference proceeding.
This is not a matter of not allowing Hoshino to reply to
the opposition of Tanaka. But rather, Hoshino’s motion fails
even without our reliance on Tanaka’s opposition to Hoshino’s
motion.
Consequently, there is no occasion to consider Hoshino’s reply
and evidence submitted therewith.
For the foregoing reason, we sustain the APJ’s denial of
Hoshino’s motion to add proposed new counts 2, 3, and 4, and
also sustain the APJ’s decision to designate all of Hoshino’s
involved claims and Tanaka’s involved claims as corresponding
to count 1, not any one of Hoshino's proposed new counts 2, 3,
and 4. The details of which claims according to Hoshino
Interference No. 103,208
Hoshino et al. v. Tanaka
- 43 -
correspond to a proposed new count can be ascertained by
reference to pages 1 and 2 of Hoshino’s Motion H2 (Paper No.
14) and page 49 of
Hoshino's brief. A copy of Hoshino’s Motion H2 and the APJ’s
decision on preliminary motions is enclosed.
Tanaka’s Motion to Suppress
Tanaka filed a paper (Paper No. 96) captioned "Motion to
Suppress" requesting the Board to rule that the second Utagawa
declaration filed with Hoshino’s reply to Tanaka’s opposition
to Hoshino’s Motion H2, together with its Exhibits G, H, and
I, "are inadmissible on the ground that they are untimely for
introducing new evidence and argument at the reply stage."
Alternatively, Tanaka requests that paragraphs 5-14, 16, 17,
and 19 of the second Utagawa declaration and Hoshino’s
exhibits G, H, and I should be suppressed and not considered
by the Board.
Because we have sustained the APJ’s decision on Hoshino’s
Motion H2 based on Hoshino’s lack of showing of a prima facie
basis for relief in the motion itself, without regard to new
Interference No. 103,208
Hoshino et al. v. Tanaka
- 44 -
points raised in and evidence presented with Tanaka’s
opposition, there has been no occasion to consider the
substance of paragraphs 5-14, 16, 17, and 19 of the second
Utagawa declaration and Hoshino’s exhibits G, H, and I.
Accordingly, Tanaka’s motion to suppress is dismissed as moot.
Interference No. 103,208
Hoshino et al. v. Tanaka
- 45 -
Judgment
Because the effective filing date of Hoshino et al.'s
involved patent and reissue application is January 22, 1986,
and the effective filing date of Tanaka's involved application
is October 2, 1985, judgment is herein entered against junior
party Hoshino et al. Accordingly, Kunihisa Hoshino, deceased,
by Chie
Hoshino, legal representative, Yoshinari Hamanishi, and Ken
Utagawa, are not entitled to claims 1-33 of their reissue
application 08/204,661, which correspond to count 1, and are
not entitled to claims 1-17 of their involved patent
4,841,325, which correspond to count 1. Judgment is herein
awarded to senior party Tanaka. Tsunefumi Tanaka, on this
record, is entitled to claims 1, 2, 5, 6, 8-11, 13-33, amended
claims 34-38, and added claims 40-53 which correspond to count
1.

BRUCE H. STONER, JR. )
Chief Administrative Patent Judge)
)
)
) BOARD OF
PATENT
) APPEALS
Interference No. 103,208
Hoshino et al. v. Tanaka
- 46 -
WILLIAM F. PATE, III ) AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JAMESON LEE )
Administrative Patent Judge )
psb
Attorney for Junior Party Hoshino et al.:
Nelson Shapiro et al.
Vorys, Sater, Seymour and Pease, LLP
1828 L Street, N.W.
Eleventh Floor
Washington, D.C. 20036-5109
Attorney for Senior Party Tanaka:
Fitzpatrick, Cella, Harper and Scinto
30 Rockefeller Plaza
New York, NY 10112