Ex Parte Glock

Board of Patent Appeals and Interferences

Sep 25, 2003

09068877 (B.P.A.I. Sep. 25, 2003)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 21
Filed by: Michael P. Tierney
Administrative Patent Judge
Board of Patent Appeals and Interferences Filed
U.S. Patent and Trademark Office September 25, 2003
P.O. Box 1450
Alexandria, VA 22313-1450
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
HERMAN BIERINGER, ERWIN HACKER,
HEINZ KEHNE and LOTHAR WILLMS
Junior Party FAXED
(U.S. Patent No. 6,124,240),
MR 2 5 2003
V.
PAT. & T.M. OFFICE
BOARD OF PATENT APPEALS JUTTA GLOCK ANDINTERFERENCES
Senior Party,
(U.S. Application No. 09/068,877).
Patent Interference No. 105,086 (MPT)
Before: LEE, MEDLEY and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
FINAL JUDGMENT
(Pursuant to 37 CFR § 1.662(a))
Bieringer was Ordered to Show Cause whyjudgement on priority should not be entered
Interference No. 105,086
Page No. 2
against Bieringer. (Order, Paper No. 19). In response to this Order, Bieringer "hereby concedes
priority as to Count L" (Paper No. 20).
Under USPTO practice:
A party may, at any time during an interference, request and agree to entry of an
adverse judgment. Thefiling by a party of a written disclaimer of the invention
defined by a count, concession ofpriority or unpatentability of the subject matter
of a count, abandonment of the invention defined by a count, or abandonment of
the contest as to a count will be treated as a requestfor entry of an adverse
judgment against the applicant or patentee as to all claims which correspond to
the count. Abandonment of an application, other than an application for reissue
having a claim of the patent sought to be reissued involved in the interference,
will be treated as a request for entry of an adverse judgment against the applicant
as to all claims corresponding to all counts. Upon the filing by a party of a request
for entry of an adverse judgment, the Board may enter judgment against the party.
3 7 C.F.R. § 1.662(a), emphasis added. As set forth in the USPTO interference practice rules,
Bieringer concession on priority is treated as a request for entry of an adverse judgment against
all Bieringer claims that correspond to the count.
Count I is the sole count in interference. (Notice Declaring Interference, Paper No. 1, p.
5). Biefinger is involved in the interference based upon U.S. Patent No. 6,124,240. Claims 1-5,
11, 12, 14, 16 and 17 of Bieringer's involved patent correspond to Count I whereas claims 6-10,
13 and 15 do not correspond and do not form a part of the interference priority contest. As
Bieringer has conceded priority as to Count 1, priority of invention is awarded against Bicringer
as to Count I and Bieringer is not entitled to their patent claims 1-5, 11, 12, 14, 16 and 17 as they
correspond to Count 1.
Bieringer has raised several allegations against Glock's application claims and invites the
panel to remand the Glock application for consideration of these allegations. For example,
Interference No. 105,086
Page No. 3
Bieringer requests that the Examiner consider "Motion Pursuant to 37 C.F.R. 1.633(a): Invalidity
of claims 2-4 and 10-19 of U.S. Application Serial No. 09/068,877 under 35 U.S.C. § 112, first
paragraph, for lack of enablement." (Paper No. 20).
This interference is being terminated at a very early stage in the proceedings.
Specifically, no preliminary motions have been filed and there are no motions pursuant to 37
C.F.R. 1.633(a) for the Examiner to consider. As no such motions were filed, Bieringer's
patentability issues remain mere allegations on this record. No recommendation is made
regarding Bieringer's "potential" motions. As always, however, the Examiner is to thoroughly
examine the patentability of Glock's claims upon the return of the application from the Board.
Upon consideration of the record, it is:
ORDERED that judgment on priority as to Count I (Notice Declaring Interference,
Paper No. 1, page 5), is awarded against Junior Party Bieringer et al.
FURTHER ORDERED that Junior Party Bieringer et al. is not entitled to a patent
containing claims 1-5, 11, 12, 14, 16 and 17 of U.S. Patent No. 6,124,240.
FURTHER ORDERED that a copy of this final decision shall be placed and given a
paper number in the file of Glock, U.S. Application No. 09/068,877 and Bieringer et al., U.S.
Patent No. 6,124,240.
Interference No. 105,086
Page No. 4
FURTHER ORDERED that if there is a settlement agreement, attention is directed to
35 U.S.C. § 135(c) and 37 CFR § 1.661.
JAMESON LEE
Administrative Patent Judge
BOARD OF PATENT
A 901. EDL APPEALS
Adminis t1ve Patent Judg5e AND
INTERFERENCES
M Jcu 1C AEL P. TIERNEY
Administrative Patent Judge
Interference No. 105,086
Page No. 5
cc (via Facsimile):
Counsel for GLOCK:
Thomas Hamilton, Esq.
William A. Teoli, Jr., Esq.
SYNGENTA CROP PROTECTION, INC.
Patent and Trademark Department
410 Swing Road
Greensboro, N.C. 27409
Fax: 336-632-2012
Counsel for BEERINGER:
William F. Lawrence, Esq.
Thomas J. Kowalski, Esq.
FROMMER, LAWRENCE & HAUG, LLP
745 Fifth Avenue
NewYorkNewYork 10151
Fax: 212-588-0500