Ex Parte DAYDownload PDFBoard of Patent Appeals and InterferencesAug 26, 200208741456 (B.P.A.I. Aug. 26, 2002) Copy Citation ne opinion in support of the decision being entered today is not binding precedent of the Board. Paper 27 Filed by: Michael P. Tierney Administrative Patent Judge Box Interference Filed Washington, D.C. 20231 26 August 2002 Tel: 703-308-9797 Fax: 703-305-0942 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES FAXED ROGER L. DAY Junior Party AVG 2 6 2002 (U.S. Application 08/741,456), PAT. & UL OFFICE V. BOARD or PATENT APPEALS ANDINTERFERENCES DAVID A. LARSEN Senior Party, (U.S. Patents 5,716,419 & 6,042,622). Patent Interference No. 104,805 Before: GARDNER-LANE, MEDLEY and TIERNEY, Administrative Patent Judges. TIERNEY, Administrative Patent Judge. JUDGMENT The involved Larsen patents have been assigned to White River Nabcolite Materials, LLC, the assignee of the involved Day application. As discussed in Paper No. 23, dated June 25, 2002, the Board will not normally maintain an interference where the involved application(s) and patent(s) are commonly assigned. See, 37 C.F.R. § 1.602(a). In response to an Order to Show Cause, Day and Larsen have confirmed the assignment of the Larsen patents and have attempted Interference No. 104,805 Page No. 2 to: I . Change the inventorship of the involved '622 Larsen patent from Larsen to "Larsen and Day." 2. Convert the involved '456 Day application to a continuation-in-part application of the involved '622 "Larsen and Day" patent. 3. Amend the involved '456 Day "continuation-in-part" application to cancel the involved claims. 4. File an Information Disclosure Statement in the involved '456 Day application. Additionally, Day has filed Day Preliminary Motion I requesting that we designate Day claims 63-70 and newly amended claims 3, 5-9 and 11-13 as not corresponding to Counts I or 2. (Day Motion 1, Paper No. 26, p. 2). According to Day, claims 3, 5-9, 11-13 and 63-70 are patentably distinct from the subject matter of Counts I or 2 of Larsen's corresponding claims. Specifically, Day argues that the claims are patentably distinct due to their recitation of various limitations on the pH, levels of dissolved sodium carbonate and bicarbonate salts, the amount of lecithin and/or the specific size of the sodium bicarbonate crystals. (Paper No. 26, p. 3). In support of Day Motion 1, Day has provided a declaration by Robert C. Wamcke. Mr. Warneke testifies that he has a degree in Chemical Engineering and has been employed for over twenty years in the mineral processing industry. (Wamcke Dec. % 2-3). Mr. Wamcke testifies that he is specifically familiar with the processes for the recovery of sodium bicarbonate from the Nahcolite and Trona solutions. (Wameke Dec. 14). Mr. Wameke also testifies that he has: Interference No. 104,805 Page No. 3 [A] good working understanding of the literature and industry practices forming public knowledge concerning the recovery of bicarbonates from aqueous solutions, especially, Nahcolite deposits (a representative teaching is found in another of Roger Day's patents U.S. 4,815,790). (Wameke Dec. 17). We conclude that Mr. Wameke is qualified to testify as to the expectations and knowledge that one skilled in this art would possess. Mr. Wameke has testified that: 20. 1 have canvassed my recollection of the prior art at the time of the Day application, and know of no teaching or suggestion of the invention recited in the Day claims; nor do I know of any report of the unexpected use of the claimed recitations in the recovery of sodium bicarbonate with controlled classification from pregnant Nalicolite solutions; 21. Specifically I am unaware of any prior art that when taken with the '419 or '622 claims, would render obvious to [one of] ordinary skill in the art the invention of the Day claims. (Wameke Dec., ýý 20-2 1). Mr. Warneke's declaration is unchallenged. Based on Mr. Warneke's declarations, we conclude that Day claims 3, 5-9, 11-13 and 63-70 are patentably distinct from the subject matter of Counts I or 2 or the undisputed corresponding claims and Larsen. As such, we grant Day Motion 1. As Junior Party Day has cancelled all of the corresponding claims ftom the involved '456 Day application, we conclude that Junior Party Day has abandoned the contest. 37 C.F.R. § 1.662. Having abandoned the contest, we terminate this interference and remand the involved '456 Day application to the examiner for further consideration. The examiner shall review the papers listed above, and if deficient, provide sufficient notice to Day as to the specific deficiencies. Moreover, the examiner shall review the Interference No. 104,805 Page No. 4 amendment filed by Day and examine the claims as if the amendment was filed in response to a non-final office action, i.e., the examiner may reject or allow the claims as he/she sees fit. Moreover, our determination that Day claims 3, 5-9, 11-13 and 63-70 do not correspond to Counts I and 2 is based, in part, on Mr. Warneke's declaration that he is unaware of any prior art that when taken with the '419 or '622 claims, would render these claims obvious. As such, should the examiner become aware of art that, when taken in combination with the claims of the '419 or '622 claims, renders Day's claims 3, 5-9, 11-13 and 63-70 obvious, the examiner may reject Day's claims. It is: ORDERED that the interference is terminated. FURTHER ORDERED that priority of invention as to Counts I and 2 is awarded against Junior Party Day, U.S. Application No. 08/741,456. FURTHER ORDERED Junior Party Day, U.S. Application No. 08/741,456 is not entitled to a patent containing claims 1-2, 4, 10, 14, 25-62 and unamended claims 3, 5-9 and I I 13 (See Paper No. 5), which correspond to Count 1 and Count 2. FURTHER ORDERED that U.S. Application No. 08/741,456 be returned to the jurisdiction of the examiner for consideration of the: 1) conversion of the application to a continuation-in-part; 2) the Amendment under 37 C.F.R. §1. 116; and 3) the Information Disclosure Statement. FURTHER ORDERED that U.S. Patent No. 6,042,622 be returned to Group 1700 for consideration of the change of inventorship from Larsen to Larsen and Day. Interference No. 104,805 Page No. 5 FURTHER ORDERED Day Motion No. I for a designation that claims 63-70 and newly dependent claims 3, 5-9 and 11 -13 do not correspond to Counts I or 2 is granted. yd Z/1 "<-/ SALLY GARDNER LANE Administrative Patent Judge BOARD OF PATENT C. EDLEY APPEALS LY C. AND S Lyi5stra ive Patent Judg Admim e INTERFERENCES MICHAEL P. T15ZY Administrative Patent Judge Interference No. 104,805 Page No. 6 cc: (Via Facsimile) Counsel for DAY: Frank S. DiGiglio, Esq. Peter I. Bernstein, Esq. SCULLY, SCOTT, MURPHY & PRESSER 400 Garden City Plaza Garden City, NY 11530 Tel: (516) 742-4343 Fax: (516) 742-4366 Copy with citationCopy as parenthetical citation