Ex Parte DAY

Board of Patent Appeals and Interferences

Aug 26, 2002

08741456 (B.P.A.I. Aug. 26, 2002)

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entered today is not binding precedent of the Board.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