DAVEY et al. BURG et al.

Board of Patent Appeals and Interferences

May 2, 2001

08386744 (B.P.A.I. May. 2, 2001)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 18
Filed by: Trial Section Merits Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
CHERYL DAVEY and
LAWRENCE T. MALEK
Junior Party,
(Patent 5,554,517),
v.
JAMES L. BURG,
PHILIPPE J. POULETTY, and JOHN C. BOOTHROYD
Senior Party,
(Application 08/427,606).
______________
Patent Interference No. 104,438
_______________
Before McKELVEY, Senior Administrative Patent Judge and
SCHAFER and GARDNER-LANE, Administrative Patent Judges.
GARDNER-LANE, Administrative Patent Judge.
FINAL JUDGMENT
The parties have filed a joint preliminary motion seeking
an order terminating the interference on the basis that there
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is no interference-in-fact (Paper 16). We GRANT the
preliminary motion and enter final judgment.
A. Findings of fact
The record supports, by a preponderance of the evidence,
the following findings, as well as any findings set out in the
discussion portion of this ORDER.
1. The count of the interference is the process defined
by claim 1 of the Davey patent (US 5,554,517 ("'517")) or the
process defined by claim 1 of the Burg application (08/427,606
("606")(Paper 1 at 5).
2. The Davey patent contains claims 1-15.
3. The Burg application contains claims 1-3 and 11-63.
4. Davey claims 1-5, 8, and 11-15 are designated as
corresponding to the count (Paper 1 at 5).
5. All of the Burg claims are designated as
corresponding to the count (Paper 1 at 5).
6. The process of Davey claim 1 and the process of Burg
claim 1 appear to be the same except that the process of Davey
claim 1 requires that the process defined therein be
undertaken "at a relatively constant temperature and without
serial addition of reagents" ('517 at claim 1).
7. Davey claims 2 to 10 depend, either directly or
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indirectly, on Davey claim 1 and thus also require that the
process they define be undertaken "at a relatively constant
temperature and without serial addition of reagents" ('517 at
claims 2 to 10).
8. The process of Davey claim 11 and the process of
Burg claim 1 appear to be the same. The process of Davey
patent claim 11 does not require that the process defined
therein be undertaken "at a relatively constant temperature
and without serial addition of reagents" ('517 at claim 11).
9. Davey patent claims 12-15 depend from Davey claim
11.
10. None of Davey claims 12-14 require that the process
of claim 11 be undertaken "at a relatively constant
temperature and without serial addition of reagents" ('517 at
claims 12-14).
11. Davey claim 15 requires that the process of claim 11
be undertaken "at a relatively constant temperature and
without serial addition of reagents" ('517 at claim 15).
12. According to Davey and Burg, none of the Burg
application claims require that the process defined by the
claims be undertaken "at a relatively constant temperature and
without serial addition of reagents" (Paper 16 at 3).
13. Davey has disclaimed its claims 11 to 14 (Paper 17).
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14. Accordingly, all the remaining Davey claims are
directed to processes that must be undertaken "at a relatively
constant temperature and without serial addition of reagents."
15. According to Davey and Burg, the remaining Davey
claims are patentably distinct from the Burg claims.
16. In particular, Davey and Burg argue that (Paper 16
at 3):
The USPTO has not cited any prior art indicating
that the novel approach of Davey in its claims 1-5,
8 and 15, would have been obvious over the Burg
claims. The claims call for adding reagents with
many activities. It would not have been obvious to
the person of ordinary skill in the art that all of
these reagents could be added at the beginning of
the process with no serial addition of reagents
during the course of the entire process.
Furthermore, it has not been shown that it would
have been obvious that this mixture of reagents and
material would react effectively and without
undesirable cross reactions to give amplification at
a relatively constant temperature without any
substantial temperature change during the entire
process. Thus, there is absolutely no basis for a
suggestion that the Davey claim is obvious in view
of the Burg claim.
17. In a statement submitted by the examiner (attached
to Paper 1), there is no prior art cited to explain why it
5
would have been obvious to undertake the process described by
the Davey and Burg claims "at a relatively constant
temperature and without serial addition of reagents."
B. Discussion
An interference-in-fact exists when at least one claim
of a party that is designated to correspond to a count and at
least one claim of an opponent that is designated to
correspond to the count define the same patentable invention.
37 CFR § 1.601(j). Invention "A" is the same patentable
invention as an invention "B" when invention "A" is the same
as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of
invention "B" assuming invention "B" is prior art with respect
to invention "A". Invention "A" is a separate patentable
invention with respect to invention "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".
37 CFR § 1.601(n). "Resolution of an interference-in-fact
issue involves a two-way patentability analysis." Winter v.
Fujita,
53 USPQ2d 1234, 1243 (BPAI 1999).
In the present circumstances, it was appropriate to
declare the interference since claim 11 of Davey and claim 1
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of Burg appear to be the same as (35 USC 102) or obvious (35
USC 103) in view of each other. However, since Davey has
disclaimed its claim 11 (along with dependent claims 12 to
14), it does not appear that at least one claim of Davey and
at least one claim of Burg define the same patentable
invention. All the remaining Davey claims contain the
limitation that the process defined therein be undertaken at
"at a relatively constant temperature and without serial
addition of reagents." No Burg claim contains this
limitation. There is insufficient evidence of record to
establish that one skilled in the art would have found it
obvious to modify any Burg claim to require that the process
defined in the claim be undertaken "at a relatively constant
temperature and without serial addition of reagents."
Accordingly, a judgment of no interference-in-fact is
appropriate.
C. Order
It is
ORDERED that joint preliminary motion 1 (Paper 16)
is GRANTED;
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FURTHER ORDERED that, there being no interference-
in-fact, judgment on priority as to Count 1, the sole count in
the interference, is awarded in favor of junior party CHERYL
DAVEY and LAWRENCE T. MALEK and senior party JAMES L. BURG,
PHILIPPE J. POULETTY, and JOHN C. BOOTHROYD;
FURTHER ORDERED that junior party CHERYL DAVEY and
LAWRENCE T. MALEK, is not entitled to a patent containing
disclaimed claims 11 to 14 of U.S. Patent 5,554,517;
FURTHER ORDERED that, on the record before us,
junior party CHERYL DAVEY and LAWRENCE T. MALEK, is entitled
to a patent containing claims 1-5, 8, and 15 of U.S. Patent
5,554,517, which correspond to Count 1 and senior party JAMES
L. BURG, PHILIPPE J. POULETTY, and JOHN C. BOOTHROYD is
entitled to a patent containing claims 1-3 and 11-63 of U.S.
application 08/427,606, which correspond to count 1;
FURTHER ORDERED that a copy of Paper 17 filed by
Davey and disclaiming claims 11 to 14 (copy attached) be
entered in the administrative record of Davey's 5,554,517
patent;
FURTHER ORDERED that if there is a settlement
agreement, the parties are directed to 35 USC § 135(c) and
37 CFR § 1.666;
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FURTHER ORDERED that a copy of this decision be
given a paper number and be entered in the administrative
records of Davey's 5,554,517 patent and Burg's 08/427,606
application.
___________________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
)
___________________________________) BOARD OF PATENT
CAROL A. SPIEGEL ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
___________________________________)
SALLY GARDNER-LANE )
Administrative Patent Judge )
Enc:
Copy of Paper 17 entitled "SUBMISSION OF DISCLAIMER UNDER
37 CFR 1.321(a)"
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cc (via facsimile and first class mail):
Attorney for Davey (real party in interest: Akzo Nobel N.V.):
PARKHURST, WENDEL & ROSSI
1421 Prince Street
Suite 210
Alexandria, VA 22314
Tel: 703-739-0220
Fax: 703-739-0229
Attorney for Burg (real party in interest: The National
Institutes of Health):
Douglas E. Olson
BROBECK, PHLEGER and HARRISON LLP
12750 High Bluff
San Diego, CA 92130-2081
Tel: 858-720-2500
Fax: 858-720-2555