OKAMOTOv.SILVA et al.

Board of Patent Appeals and Interferences

Sep 30, 1998

08500586 (B.P.A.I. Sep. 30, 1998)

Application No. 07/231,151, filed August 11, 1988, now U.S. Patent No. 4,997,903, issued1
March 5, 1991. Assignor to Atomize Petrochemical Co. Ltd., A Corp. of Japan.
Application No. 08/500,586, filed July 11, 1995. Accorded Benefit of U.S. Application Nos.2
07/504,816, filed April 5, 1990, now Patent No. 5,464,930, issued November 7, 1995;
07/128,848, filed December 4, 1987, now Patent No. 5,011,967, issued April 30, 1991; and
06/917,751, filed October 10, 1986, now Patent No. 4,737,573, issued April 12, 1988.
Assignor to the General Electric Co.
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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written for publication in a law journal and (2) is not binding precedent of the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. 57

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
MASAYA OKAMOTO
Junior Party,1
v.
JAMES M. SILVA and ROBERT A. PYLES
Senior Party.2
____________
Interference No. 103,732
____________
FINAL HEARING: January 29, 1998
____________
CALVERT, SOFOCLEOUS, and HANLON, Administrative Patent Judges.
Interference No. 103,732
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SOFOCLEOUS, Administrative Patent Judge.
FINAL DECISION
The subject matter of this interference relates to an optical disk substrate
formed of a polycarbonate resin. The count of this interference is as follows:
Count 2
An optical disk substrate formed of a polycarbonate resin represented by the
general formula
C H -C(CH ) -C H -O-C(O)-[O- /o-Y- /o-O-C(O)-] O-C H -C(CH ) -C H ,6 5 3 2 6 4 n 6 4 3 2 6 5
wherein /o is a phenylene radical and Y is a divalent radical in which one or two atoms
separate the two /o units bonded thereto, and n is a positive integer.
The party Okamoto's claims 1 to 7 and the party Silva et al.'s claims 21 and
22 correspond to count 2.
This interference is related to Interference No. 103,272 which involves the
same Okamoto patent. Since we held in that interference that the party Okamoto is not
entitled to its claims 1 to 7, this interference is moot. However, for the sake of
completeness in the event of an appeal of the decision in Interference No. 103,272, we
deem it necessary to decide this interference.
In his Decision on Preliminary Motions, the Administrative Patent Judge
(APJ) granted, inter alia, the party Okamoto’s preliminary motion for judgment on the
ground that there is no interference-in-fact. The party Silva et al. opposed this motion.
After granting the motion, the APJ notified the parties that judgment would be entered
Interference No. 103,732
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stating that each party is entitled to its claims corresponding to the count. In response to
the notification, the party Silva et al. requested final hearing to review the decision granting
the motion. The party Silva filed a record; both parties filed briefs, and appeared, through
counsel, at final hearing.
The only issue before us is whether there is an interference-in-fact.
INTERFERENCE-IN-FACT
We hold that an interference-in-fact does not exist.
An APJ’s decision on a preliminary motion constitutes an interlocutory order.
37 CFR § 1.601(q). The interlocutory order is presumed to have been correct and the
party attacking the order, here the party Silva, has burden of showing error or abuse of
discretion on the part of the APJ. 37 CFR § 1.655(a); Gustavsson v. Valenti, 25 USPQ2d
1401, 1405-06, (Bd. Pat. App. & Int. 1991) and Suh v. Hoefle, 23 USPQ2d 1321, 1326
(Bd. Pat. App. & Int. 1991). An abuse of discretion occurs if the decision (i) is clearly
unreasonable, arbitrary, or fanciful; (ii) is based on an erroneous conclusion of law; (iii)
rests on clearly erroneous fact findings; or (iv) involves a record that contains no evidence
on which the APJ could rationally base his or her decision. Abrutyn v. Giovanniello, 15
F.3d 1048, 1050-51, 29 USPQ2d 1615, 1617 (Fed.Cir. 1994).
The test for interference-in-fact is set forth in 37 CFR § 1.601(n), which
provides that an invention "A" is a separate patentable invention with respect to invention
Interference No. 103,732
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"B" when invention "A" is new (35 U.S.C. § 102) and non-obvious (35 U.S.C. § 103) in
view of invention "B," assuming invention "B" is prior art with respect to invention "A."
In holding that an interference-in-fact did not exist, the APJ agreed with the
party Okamoto that the molecular weight range recited in its claims is critical and gives
unexpected results, i.e., optical disks having molecular weights below or above the range
recited in the party Okamoto’s claims did not possess a combination of the desired impact
strength and low birefrigence as shown by the data in the Tables found in columns 6 and 7
of the Okamoto patent. The party Silva did not challenge this data in any way.
In its brief, the party Silva et al. contends that the party Okamoto’s claims
define and embrace two different patentable inventions, whereas the two inventions were
made by different entities at General Electric, one by party Silva et al. (this interference)
and the other by Heuschen (Interference No. 103,272). This, however, is not considered a
reason for holding that an interference-in-fact exists.
As we noted above, the test for interference-in-fact is set forth in 37 CFR
§ 1.601(n). After considering the evidence, the APJ agreed with the party Okamoto that it
had made a sufficient showing, which the party Silva et al. does not dispute, that the party
Okamoto’s claims are novel and nonobvious over the party Silva et al.'s claims, assuming
that the party Silva et al.’s claims were prior art. Nowhere in the brief has the party Silva et
al. shown where the APJ’s decision constitutes an abuse of discretion.
Interference No. 103,732
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For the foregoing reasons, we hold that the party Silva et al. has not
sustained its burden to show that there is an interference-in-fact.
Interference No. 103,732
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JUDGMENT
An interference-in-fact does not exist. Accordingly, on the present record,
Masaya Okamoto, the junior party, is not entitled to a patent containing claims 1 to 7,
having lost those claims in Interference No. 103,272; and James M. Silva and
Robert A. Pyles, the senior party, are entitled to a patent containing claims 21 and 22.
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
clm
Interference No. 103,732
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Attorney for Okamoto:
Richard D. Kelly
Oblon, Spivak, McClelland, Maier
& Neustadt
1755 Jefferson Davis Highway
4th Floor
Arlington, VA 22202
Attorney for Silva et al.:
Boris Haskell
2316 South Eads St.
Arlington, VA 22202