Ex Parte Burnette

Board of Patent Appeals and Interferences

Oct 22, 2003

08468679 (B.P.A.I. Oct. 22, 2003)

The opinion in support of the decision being entered today
is not binding precedent of the Board.
Paper No. 59
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
ANDINTERFERENCES
MAILED
WITOLD CIEPLAK
Junior Party, OCT 2 2 2003
(Application 07/542,149) r..S. PATENT AND TRADEMARK OFFICE
BOARD OF PATENT APPEALS No T F f'Fý V. AND IINTERFFRENCES
MICHEL H. KLEIN, HEATHER A. BOUX,
STEPHEN A. COCKLE, SHEENA M. LOOSMORE,
AND GAVIN R. ZEALY
Junior Party,
(Application 08/070,879)
V.
MICHEL H. KLEIN, HEATHER A. BOUX,
STEPHEN A. COCKLE, SHEENA M. LOOSMORE,
AND GAVIN R. ZEALY
Junior Party,
(Patent 5,358,868),
V.
WALTER N. BURNETTE III
Senior Party
(Patent 5,773,600).
Patent Interference No. 104,172
ORDER TERMINATING THE INTERFERENCE
Interference No. 104,172
The record indicates that Party Klein's involved U.S. application 08/070,879, filed
June 3, 1993 - has never been examined. Notwithstanding that the Notice declaring the
interference (Paper No. 1) indicates that claims 25, 28-30, 33-35, 38, 39, 54-56, 64-68,
74, and 75 of Klein's application are designated to correspond to the count, their
patentability has never been determined. The patentability of an application claim is a
condition precedent to declaring an interference between the application and an
unexpired patent. 37 C.F.R. § 1.606. Accordingly, the patentability of Klein's application
claims must be determined before an interference involving Klein's U.S. application
08/070,879 and Burnette's U.S. Patent 5,773,600 can proceed.
The record also indicates that this interference improperly involves a senior party
patent and a junior party patent - Burnette's U.S. Patent 5,773,600 and Klein's U.S.
Patent 5,358,868. See Louis v. Okada, 57 USPQ2d 1430, 1434 (Bd. Pat. App. & Int.
2000).
The parties have been contacted about this matter. The parties have responded
by recommending, in part, that Klein's involved application be returned to the examiner
for prosecution.
Consistent with the recommendation of the parties that Klein's involved
application be returned to the examiner for prosecution, undersigned ORDERS the
return of Klein's involved application 08/070,879 and instructs the examiner to examine
it.
-2-
0
Interference No. 104,172
In order to expedite this proceeding, it is hereby ORDERED that Interference No.
104,172 be terminated without prejudice to the declaration of new interferences
involving
1. Klein's Application Serial No. 08/070,879 - if the current question on the matter of
the patentability of Klein's application claims is finally resolved in the affirmative,
Klein's U.S. Patent 5,358,868, and Cieplak's Application Serial No. 07/542,149;
2. Klein's Application Serial No. 08/070,879 - if the current question on the matter of
the patentability of Klein's application claims is finally resolved in the affirmative
and Burnette's U.S. Patent 5,773,600; and,
3. Cieplak's Application Serial No. 07/542,149 and Burnette's U.S. Patent 5,773,600.
If declared, new interferences will be conducted by the Trial Section of the Board
of Patent Appeals and Interferences.
ruce er . Jr.' Chief
P tj
41 e 6 Administrative aten Judg
3-
Interference No. 104,172
Attorney for Cieplak:
William S. Feiler, Esq.
Morgan & Finnegan, L.L.P.
345 Park Avenue
New York, NY 10154
Attorney for Klein et al.
R. Danny Huntington, Esq.
Donna M. Meuth, Esq.
Burns, Doane, Swecker & Mathis, L.L.P.
P.O. Box 1404
Alexandria, VA 22313-1404
Attorney for Burnette, I 11:
Michael J. Wise
Perkins Coie LLP
162026 1h Street
6 1h Floor, South Tower
Santa Monica, CA 90404-4013
-4-