Ex Parte Hazes

Board of Patent Appeals and Interferences

Jan 30, 2004

10192146 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 116
Filed by: Trial Section Merits Panel
Mail Stop Interference
P.O. Box 1450
Alexandria, VA 22313-1450 Filed:
Tel: 703-308-9797 30 January 2004
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
MAILED
HANS HAZES FAN 3 0 2004
P FIC
Junior Party
(U.S. Patent 6,086,973), PAT. & TIVI. OF I E
BOARD OF PATENT APPEALS
c S AND.IINTEI] RFERENCE
V.
JAMES L. BRIES and MICHAEL D. HAMERSKI
Senior Party,
(U.S. Application 08/989,507).
Patent Interference No. 104,833
Before: LANE, MEDLEY and TIERNEY, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
DECISION ON PRELIMINARY MOTIONS AND JUDGMENT
A. Introduction
At the time the interference was declared on 26 March 2002 (Paper 1), the Hazes
involved patent and the Bries involved application were assigned to different entities (see Papers
4 and 14). After preliminary motions, oppositions, and replies were filed, but prior to oral
Interference No. 104,833
Page No. 2
argument, the parties settled the interference, whereby the party Hazes assigned its patent to Bries
real party in interest, Minnesota Mining and Manufacturing Company (3M)'.
Unless good cause is shown, an interference shall not be continued between an
application and a patent owned by the same party. 37 CFR § 1.602(a). Thus, 3M was ordered to
show cause why judgment should not be entered against the junior party Hazes (Paper 108). 3M
responded by requesting a decision on the preliminary motions filed to make a proper
determination of priority vis4-vis Hazes and Bries (Papers 108 and 110). 3M's request was
granted (Paper 110 at 3).
Oral argument on preliminary motions was held on 5 August 2003. As common
assignee, only 3M had counsel present at the hearing. During oral argument, counsel for 3M
requested that there emanate from this decision a precedent for deciding certain preliminary
motions at the request of a common assignee. That is, counsel requested that the board undertake
deciding "close" issues in order to assist a common assignee in determining priority (Paper 114
at 5). 3M's request for a precedential decision is denied.
Ordinarily, despite having filed preliminary motions, when a common assignee emerges,
a decision on preliminary motions will not be decided. Here, counsel for 3M, during a
conference call with the administrative patent judge (APJ) designated to handle the interference,
explained to the APJ that 3M had a difficult task in deciding priority between Bries and Hazes,
since it was a "close call" as to what the count should be, whether Bries' claims were patentable,
and whether Hazes should be accorded benefit of its German application. Counsel for 3M
' According to PTO records, the assignment was executed on 12 June 2003, and recorded
on I I July 2003.
Interference No. 104,833
Page No. 3
requested that the Board decide those issues. Based on the specific facts of the case, the APJ
agreed to proceed to oral argument and to decide those issues raised regarding the proper count,
the patentability of Bries' involved claims, and the benefit Hazes sought to be accorded (Paper
I 10). That the APJ did so was solely within his discretion. That the APJ did so is not, in any
way, an indication that a future common assignee in the same position will be afforded the same
courtesy. Based upon the particular facts of this interference, we conclude that the A.PJ did not
abuse his discretion in continuing the interference. For these reasons, we exercise our discretion
to determine all of the preliminary motions filed.
B. Findin2s of fac
The record supports the following findings of fact, as well as any other findings of fact set
forth in the discussion portion of this decision, by at least a preponderance of the evidence.
The interLerence
I . The interference was declared between junior party Hans Hazes ("Hazes") and
senior party James L. Bries and Michael D. Hamerski ("Bries").
2. Hazes is involved in the interference on the basis of its 6,086,973 ( ... 973 patent,
which issued from application 09/098,480, filed 16 June 1998.
3. Bries is involved in the interference on the basis of its 08/989,507 ( ... 507
application, filed 12 December 1997.
PrioriU benefit
4. In the Notice Declaring Interference, neither party was granted priority benefit of
any earlier filed application (Paper I at 3-4).
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The counts
5. The interference was declared with two counts, i.e., Count I and Count 2 (Paper I
at 5).
6. Count 1 is as follows:
A composition according to claim I of U.S. Patent No. 6,086,973.
7. Count 2 is as follows:
A method according to claim I I of U.S. Patent No. 6,086,973.
8. Claim 1 of the '973 patent is as follows:
An adhesive fihn strip composite comprising:
a) an adhesive film strip which is elastically or plastically extensible, exhibits an
adhesion less than its cohesion and the adhesion disappears on "tension, and
which exhibits a reaction of stripping force to tear load of at least 1: 1. 5, which
when bonded to a substrate, can be released from said substrate by pulling on
the adhesive film strip in the direction of the plane of the bond formed between
said adhesive film strip and said substrate; and
b) a plurality of hook or loop fasteners adhered to one side of said adhesive film
strip in such a way that said hook or loop fasteners are free to be fastened to
mating loop or hook fasteners.
9. Claim I I of the '973 patent is as follows:
In a method comprising bonding an adhesive film strip to a substrate, and
optionally thereafter releasing said adhesive strip from said substrate by pulling
on the adhesive fihn strip in the direction of the plane of the bond formed between
said adhesive film strip and said substrate, the improvement which comprises
employing as said adhesive film strip the adhesive film strip according to any on
of claims 1-4, 5, 6-9 and 10.
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Claim correspondence
10. All of the Hazes claims and all of the Bries claims correspond to either Count 1 or
Count 2.
11. Hazes claims 1-10 and Bries claims 68-77 correspond to Count I (Paper 9 at 2).
12. Hazes claims 11-13 and Bries claims 78-81 correspond to Count 2 (Paper 9 at 2).
Hazes motions
13. Hazes filed the following eight preliminary motions:
(a) Hazes preliminary motion I under 3 7 CFR 1. 63 3 (a) for j udgment that all
of Bries claims are unpatentable under 35 U.S.C. § 112, T I for lack of written description (Paper
33).
(b) Hazes preliminary motion 2 under 37 CFR 1.633(f) seeking priority
benefit of German patent application DE 197 26 375, filed 21 June 1997 (Paper 34).
(c) Hazes preliminary motion 3 under 37 CFR 1.633(h) seeking to add reissue
10/192,146, filed 10 July 2002, to the interference (Paper 35).
(d) Hazes contingent preliminary motion 4 under 37 CFR 1.633(f) seeking
priority benefit of German patent application DE 197 26 375, filed 21 June 1997, as to the
reissue application, if added (Paper 36).
(e) Hazes preliminary motion 5 under 37 CFR 1.633(c)(1) to substitute count
3 or count 4 2 for counts I and 2 (Paper 37).
2 Hazes wishes to substitute count 4 only if its motion to add the reissue application
is granted (Paper 37 at 2).
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(f) Hazes contingent preliminary motion 6 under 37 CFR 1.633(f) seeking
priority benefit of German patent application DE 197 26 375, filed 21 June 1997, as to proposed
count 3 or 4, if Hazes preliminary motion 5 is granted (Paper 38).
(g) Hazes contingent preliminary motion 7 under 37 CFR 1.6330) and
1.633(f) seeking priority benefit of German patent application DE 197 26 375, filed 21 June
1997 as to the substituted counts, if Bries' preliminary motion 1 (to substitute counts) is granted
(Paper 48).
(h) Hazes contingent preliminary motion 8 under 37 CFR 1.6330) and
1.633(f) seeking priority benefit of German patent application DE 197 26 375, filed 21 June
1997, as to the substitute counts, if Bries' preliminary motion 3 (to substitute counts) is granted
(Paper 61).
14. In addition, Hazes filed a motion to suppress (Paper 90) certain cross examination
testimony of Dr. Thorsten Krawinkel (Exh. 2032).
Bries motions
15. Bries filed the following four preliminary motions:
(a) Bries preliminary motion I under 37 CFR 1.633(c)(1) to substitute
proposed counts 3 and 4 for present counts I and 2 (Paper 25).
(b) Bries preliminary motion 2 under 37 CFR 1.633(c)(2) to add claims 82-85
to its '507 application and to have them designated as corresponding to either count 3 or count 4
(Paper 26).
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Page No. 7
(c) Bries preliminary motion 3 under 37 CFR 1.633(c)(1) to substitute
proposed counts 5 and 6 for counts I and 2, provided that the Hazes reissue application is added
(Paper 46).
(d) Bries preliminary motion 4 under 37 CFR 1.633(c)(2) to add claims 86-90
to its '507 application and to have them designated as corresponding to either count 5 or 6 (Paper
47)
16. In addition, Bries filed a motion to suppress the declaration testimony of Dr.
Krawinkel (Exhs. 2030 and 2031) and the certificate of accuracy (Exh. 2025)
(Paper 95).
C. Decision
Hazes preliminga motion I
Hazes, through its preliminary motion 1, argues that all of Bries' involved claims 68-81
lack written description. Bries claims 69-81 depend either directly or indirectly on claim 68.
The disputed limitation is contained in Bries claim 68. That claim, with the disputed limitation
underlined, is as follows:
68. An adhesive film strip composite comprising:
a) an adhesive film strip:
(i) which is elastically or plastically extensible,
(ii) which exhibits an adhesion less than its cohesion,
(iii) the adhesion of which disappears on extension,
(iv) which exhibits a ratio of peel force to tear strength of at least 1:2, and
Interference No. 104,833
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(v) which, when bonded to a substrate, can be released from said substrate by
pulling on the adhesive film strip in the direction of the plane of the bond formed
between said adhesive film strip and said substrate; and
b) a plurality of hook or loop fasteners adhered to one side of said adhesive film strip
in such a way that said hook or loop fasteners are ftee to be fastened to mating loop or
hook fasteners.
The issue before us is whether the Bries specification properly and effectively
incorporates by reference the description of the underlined ratio from the Kreckel '581 patent3.
Incorporation by reference is a question of law. As stated in Advanced Divlay Systems, Inc. v.
Kent State University, 54 USPQ2d 1673, 1679 (Fed. Cir. 2000):
To incorporate material by reference, the host document must identify with
detailed particularity what specific material it incorporates and clearly indicate
where that material is found in the various [referenced] documents. [Citations
omitted.]
In Bries' specification, the statement of incorporation of the Kreckel '581 patent is as
follows:
Suitable plastic backing materials are disclosed in U.S. Patent nos.
5,516,581 and 5,672,402 to Kreckel et at and in co-pending U.S. Patent
application serial number 08/308,937 (Bries et al.), each of which are commonly
owned by the Assignee of the present application, and the complete disclosures of
which are incorporated by reference. (Ex. 1009 at 25, lines 16-20).
The portion of the Kreckel '581 patent that allegedly provides support for the claimed
ratio is in the background section of the Kreckel patent and is in reference to a German document
as follows:
German (OS) 3331 016 Al discloses another adhesive tape for removable adhesive
bonds, whereby the tape exhibits high elasticity and low plasticity. The adhesive strength
U.S. Patent 5,516,581 (Ex. 2005).
0
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is less than the cohesive strength, and the adhesion capability essentially disappears as the
film is being stretched. The ratio of peel force to tear strength of the tape is about 1:2 or
greater and the adhesive bond can be released by pulling the film in the direction of the
plane of the adhesive joint (Ex. 2005, col. 1, lines 47- 54).
By the standard set forth in Advanced DiWIgy Systems, hic., sul2r , Bries's specification,
has not identified with detailed particularity what specific material it seeks to incorporate. The
general phrase "suitable plastic backing materials. . . " is so vague that we do not know with
reasonable certainty what particular material is at stake and, more importantly where it may be
found in the referenced documents. In other words, we do not know if the "suitable plastic
backing materials" are those described in the Kreckel '581 embodiments, or those of the German
reference, as that material is generally described in the background section of the Kreckel '581
patent, and which purportedly has numerous disadvantages that the Kreckel invention solves.
Logic would dictate that the material to be incorporated is that which is specifically described in
the detailed description section of the Kreckel '581 patent at columns 3 and 4, lines 62 to 17, and
not what is generally described in the background section of the '581 patent, which is said to be
inferior. Bries has failed to sufficiently demonstrate otherwise.
Furthermore, Bries' argument that the recited ratio is old in the art is misplaced. The
issue is not whether the peel force to tear strength ratio would have been obvious to one of
ordinary skill in the art based on the Bries disclosure, but whether there is sufficient support in
the specification to demonstrate that the Bries inventors themselves contemplated the claimed
feature at issue.
For these reasons, Hazes preliminary motion I is granted.
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Bri es preliminM motions I and 2
Through its preliminary motion 1, Bries moves to redefine the interfering subject matter
by substituting proposed counts 3 and 4 for counts I and 2. Bries preliminary motion 2 seeks to
add claims 82-85 to the Bries application, to designate claims 82 and 84 as corresponding to
count 3, and to designate claims 83 and 85 as corresponding to count 4. The proposed counts
and claims eliminate any specified ratio of peel force to tear strength recited in Bries claim 68
and in count 1.
Proposed count 3, which is identical to proposed claim 82 is as follows:
An adhesive film strip composite comprising:
a) an adhesive film strip:
(i) which is elastically or plastically extensible,
(ii) which exhibits an adhesion less than its cohesion,
(iii) the adhesion of which disappears on extension,
(iv) which, when bonded to a substrate, can be released from said substrate by
pulling on the adhesive film strip in the direction of the plane of the bond formed
between said adhesive film strip and said substrate;
(v) which, is sufficiently extensible for debonding to occur but of sufficient tensile
strength so as not to rupture during debonding; and
b) ' a plurality of hook or loop fasteners adhered to one side of said adhesive film strip
in such a way that said hook or loop fasteners are free to be fastened to mating loop or
hook fasteners.
Proposed count 4, which is identical to proposed claim 83 is as follows:
In a method comprising bonding an adhesive film strip to a substrate, and
optionally thereafter releasing said adhesive film strip from said substrate by
pulling on said adhesive film strip in the direction of the plane of the bond formed
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between said adhesive film strip and said substrate, the improvement which
comprises employing as said adhesive film strip the adhesive film strip according
to count 3 [claim 82].
Bries argues, supported by evidence, that the elimination of the ratio of the film
exhibiting a reaction of stripping force to tear load of at least 1: 1.5, does not render its proposed
count 3, or proposed claims unpatentable, since the ratio was well known at the time of the
invention (Paper 25 at 12). Bries argues, with supporting evidence, that it is the combination of
the film strip composite and the hook or loop fasteners, without the ratio, which renders the
count patentable over the prior art of record.
Hazes arguments in its oppositions 1 and 2 are essentially identical. Hazes does not
challenge the patentability of the proposed counts or proposed Bries claims. Rather, Hazes
argues that Bries failed to provide a suitable reason for substituting the counts (adding claims 82
85). However, Bries does give a reason for substituting counts I and 2 with proposed counts 3
and 4, and adding claims 82-85. As Bries points out in its motion, the Administrative Patent
Judge (APJ) assigned to the interference, raised the issue of whether Bries had support for the
ratio limitation of its involved claim 68, which is similarly contained in count 1. We understand
from Bries' motions that Bries proposes to amend the counts and its claims by taking out the
ratio, so as to avoid the question of patentability of the count and claims to Bries. Accordingly,
Bries' position is clear. Hazes argues that changing the counts and claims as proposed, e.g., by
eliminating the ratio so that the counts and claims are patentable to Bries, is not [an acceptable
reason] for changing the counts and claims, since Bries admits that the scope of the counts and
claims do not change. The argument is not persuasive. Hazes has failed to sufficiently
Interference No. 104,833
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demonstrate that changing the counts and claims in order for the counts and proposed claims to
be patentable to the moving party is an unacceptable reason for doing so.
Additionally, Hazes argues that it would be unjust to allow Bries to amend the counts and
add claims to its application in order to make Bries whole. The interference rules allow for a
party to amend or add claims to its application, and to amend or add counts to an interference.
The rules do not provide limiting reasons for doing so. Often times, when a party's claims are
attacked, the party with an involved application will respond by moving to amend or add claims,
to amend or change the count(s), in order to overcome the rejection. Such a response is not only
acceptable, but is contemplated by the interference rules. See 37 CFR & 1.633(i).
Hazes also argues that it may not be able to meet the limitation that the film be
"sufficiently extensible for debonding to occur but of sufficient tensile strength so as not to
rupture during debonding" as recited in proposed count 3. However, Hazes' argument is
conclusory. Hazes fails to direct us to evidence that would demonstrate that it could not meet the
above quoted limitation. We will not simply take Hazes word that it may not be able to meet the
limitation without sufficient proof to demonstrate the matter asserted. Johnston v. IVAC CoM.,
885 F.2d 1574, 1581, 12 USPQ2d 1382, 1387 (Fed. Cir. 1989) (mere attorney argument is not a
substitute for evidence of record). Even Hazes does not take a clear position on the matter. It
states that it may not be able to meet the limitation. We will not deny Bries' motion based on
Hazes unsupported assertion that it may not be able to meet a particular limitation.
Lastly, Hazes argues that there is no reason for having two separate counts, since there is
no patentable distinction between the two proposed counts. In its reply, Bries states that it does
Interference No. 104,833
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not oppose having one count, with the count being the disjunctive alternative of Bries' proposed
claims 82 and 83.
For the above reasons, Bries preliminary motion 1 is granted-in p . Bries preliminary
motion 2 is grante . Counts 1 and 2 are substituted with count 3, which is the disjunctive
alternative of Bries' claims 82 and 83 as follows:
82. An adhesive film strip composite comprising:
a) an adhesive film strip:
(i) which is elastically or plastically extensible,
(ii) which exhibits an adhesion less than its cohesion,
(iii) the adhesion of which disappears on extension,
(iv) which, when bonded to a substrate, can be released from said substrate by
pulling on the adhesive film strip in the direction of the plane of the bond formed
between said adhesive film strip and said substrate;
(v) which, is sufficiently extensible for debonding to occur but of sufficient tensile
strength so as not to rupture during debonding; and
b) a plurality of hook or loop fasteners adhered to one side of said adhesive film strip
in such a way that said hook or loop fasteners are free to be fastened to mating loop or
hook fasteners.
OR
83. In a method comprising bonding an adhesive film strip to a substrate, and
optionally thereafter releasing said adhesive film strip from said substrate by
pulling on said adhesive film strip in the direction of the plane of the bond formed
between said adhesive film strip and said substrate, the improvement which
comprises employing as said adhesive film strip the adhesive film strip according
to claim 82.
0
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Hazes preliminM motions 2 and 7
Hazes, through its preliminary motions 2 and 7, seeks to be accorded benefit of German
Patent Application No. DE 197 26 375, filed 21 June 1997 for the original counts (preliminary
motion 2) and for Bries proposed counts 3 and 4 (preliminary motion 7). Since we have adopted
Bries proposed count 3 as modified, and have substituted original counts I and 2 with count 3,
Hazes preliminary motion 2 is dismissed as moot4. hi order to be accorded benefit, Hazes'
priority application need describe an enabling embodiment within the scope of the count. Weil v.
Fritz, 572 F.2d 856, 865-66 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978); Hunt v. Trepl2schuh,
523 F.2d 1386, 1389, 187 USPQ 426, 429 (CCPA 1975).
Count 3 that has been adopted as discussed above, includes the limitations that (1) the
film strip is elastically or plastically extensible, (2) the film strip exhibits an adhesion less than
its cohesion, and (3) the adhesion disappears on extension. In. its motion 7, Hazes argues that it
has written description for functional limitations (1)-(3) by way of claims 5 and 6 of its German
application. Claim 5 depends from either claim 1 or claim 2. Claim 6 depends from either claim
I or claim 2. Claim 5 recites that the adhesive film strips are "elastically or plastically
extensible." Claim 6 recites that "the adhesion of the adhesive film strips (2, 8) is less than the
cohesion, the adhesion largely disappears on extension ......
Hazes argues that the limitations of the count that are found in two separate dependent
claims in its German application, neither of which depend from the other, satisfies the
' The arguments made with respect to Hazes preliminary motion 2 are essentially the
same as those made with respect to Hazes preliminary motion 7. That is, the disputed language
is contained in original counts 1 and 2 as well as adopted count 3.
Interference No. 104,833
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requirements for granting priority benefit. Hazes argument is not persuasive. That the inventors
had possession of two separate embodiments (claim 5 and claim 6), does not necessarily mean
that the inventors had possession of yet a third embodiment that is a combination of the features
of the first two embodiments. Hazes has failed to direct us to where in the German application
that the inventors had contemplated a film strip that is both plastically or elastically extensible
and that exhibits an adhesion less than its cohesion, the adhesion of which disappears on
extension.
It may be that it would have been obvious, at the time of the invention, to combine the
features of the German application claim 5 with the features of the German application claim 6.
However, the question is not one of obviousness. Rather, the query is whether Hazes, at the time
of filing the German application, had possession of an enabling embodiment within the scope of
the count. Here, Hazes has failed to satisfy its burden to demonstrate that it should be accorded
benefit, for the purposes of priority, of its German application. Accordingly, Hazes preliminary
motion 7 is denied.
Hazes 12reliminM motion 3 to add to the interference its reissue 4pplication
Hazes seeks to add its reissue application 10/ 192,146 to the interference. Claim I of the
reissue application, from which all of the remaining claims 2-15 depend, differs from Hazes
involved claim I in that the limitation "in such a way that said hook or loop fasteners are free to
be fastened to mating loop or hook fasteners" has been removed.
As the movant, Hazes must demonstrate that the reissue claims it seeks to add to the
interference interfere-in-fact with Bries' involved claims. See Paper 1, Standing Order § 24.
0
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instead, Hazes compares the reissue claims with the count and concludes that since the reissue
claims are broader in scope than the count, then the claims should correspond to the count.
Hazes' argument is flawed. Original count 1 is Hazes involved claim 1. By comparing its
reissue claims to count I (Hazes claim 1), Hazes is in essence comparing one set of its own
claims with another set of its own claims. However, Hazes must compare its claims with Bries
claims in order to demonstrate that there is an interferencc-in-fact. Furthermore, that analysis is
a two way analysis. See, Eli Lilly v. Board of Regent of the Univ. of Wash., 334 F.3d 1264, 67
USPQ2d 1161 (Fed. Cir. 2003). Thus, Hazes must demonstrate that (1) at least one of Hazes'
reissue claims anticipates or renders obvious one of Bries' claims and (2) that the same Bries'
claim anticipates or renders obvious the same Hazes' claim. No such analysis was performed.
During oral argument, the panel expressed concern to 3M's counsel that no showing of an
interference-in-fact had been made in the Hazes preliminary motion to add the reissue application
(Paper 114 at 36-37). In response, counsel for 3M requested time to respond. A paper entitled
"3M'S RESPONSE TO THE PANEL'S INQUIRY" was filed (Paper 115). Thatpaperstates
that "3M does not and will not assert that any of the claims in Hazes's reissue application are
patentably distinct from any of the claims in Bries's application." Ordinarily such a statement
would not meet the requirements necessary to demonstrate that an interference-in-fact exists.
However, based on the specific facts of this case, including 3M's admission against interest5, and
in light of the language being omitted from Hazes original claims, the Hazes motion in
' 3M's counsel requested that the reissue application be added to ensure that if the
underlying Hazes patent lost on priority then the Hazes reissue would likewise be found
unpatentable. (Paper 114 at 23-26).
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combination with 3M's statement is sufficient in this particular case to demonstrate that there is
an interference-in-fact between Hazes reissue claim I and Bries added claim 82. Accordingly,
Hazes preliminary motion 3 is granted. Hazes reissue application 10/ 192,146 is added to the
interference.
The remaining preliminary motions
Hazes has filed a preliminary motion 5 to substitute a single count 3 for original counts I
and 2. Hazes' proposed count 3 is original count I or count 2. Hazes proposed count 3 is similar
to the count 3 adopted, except that the adopted count 3 eliminates the ratio limitations. For the
reasons discussed supra, in connection with Bries' preliminary motion 1, we have adopted count
3 in which the ratio is eliminated and a single count is adopted, and thus have addressed Hazes
arguments with respect to Hazes preliminary motion 5. Accordingly, that portion of Hazes
preliminary motion 5 seeking to substitute its count 3 is denied.
Contingent upon adding its reissue application to the interference, Hazes alternatively
moves for its proposed count 4. The proposed count 4 is the reissue application claim I or
reissue application claim 11. The proposed count 4, like reissue application claim 1, eliminates
the limitation "in such a way that said hook or loop fasteners are free to be fastened to mating
loop or hook fasteners." Bries, through its preliminary motion 3, proposes to adopt counts 5 and
6 for counts I and 2, contingent upon the adding of Hazes reissue application to the interference.
Bries' proposed count 5 is similar to Hazes reissue claim 1, in that it eliminates the limitation "in
such a way that said hook or loop fasteners are free to be fastened to mating loop or hook
fasteners." Bries' proposed count 5 also eliminates the ratio from the reissue claim 1. Hazes
I
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seeks benefit of its German application for all alternatives of the count, including original counts
I and 2, as to its reissue application (Hazes preliminary motions 4, 6, and 8). Bries preliminary
motion 4 seeks leave to add claims 86-90 to its application, which are similar to Hazes reissue
application claims, except that the proposed claims eliminate the ratio.
During oral argument, counsel for 3M agreed that if the panel determined that Hazes
should not be accorded benefit of its German application for the purposes of priority with respect
to its involved patent, that Hazes would also not be entitled to the benefit of the German
application for its reissue application that it seeks to add to the interference (Paper 114 at 22-24).
Indeed, all of the variations of the count(s) in contemplation of adding the Hazes reissue
application, include the limitations that (1) the film strip is elastically or plastically extensible,
(2) the film strip exhibits an adhesion less than its cohesion, and (3) the adhesion disappears on
extension. As discussed in connection with Hazes preliminary motion 7, Hazes has failed to
direct us to where in the German application that the inventors had contemplated a film strip that
is both plastically or elastically extensible and that exhibits an adhesion less than its. cohesion, the
adhesion of which disappears on extension. Hazes failed to sufficiently demonstrate that the
German application's two mutually exclusive dependent claims 5 and 6, without more, constitute
an enabling embodiment within the scope of the various counts.
Counsel for 3M agreed that if the reissue application was added solely for the purpose of
entering judgment against it, on the basis that Hazes was not entitled to the benefit of its German
patent application for its reissue application, then there would be no reason to decide the
remaining preliminary motions regarding count and claim construction with respect to Hazes
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reissue application (Paper 114 at 29-34). Accordingly, we dismiss as moot Bries preliminary
motions 3 and 4, Hazes preliminary motions 4, 6 and 8, and that portion of Hazes preliminary
motion 5 seeking to add count 4. For the purpose of entering judgment against Hazes reissue
application claims 1-15, those claims are designated as corresponding to count 3.
Motions to sapress
Both Hazes and Bries filed motions to suppress certain evidence (Papers 90 and 95).
During oral argument, counsel for 3M withdrew from consideration both motions to suppress
(Paper 114 at 8). Accordingly, Bries motion to suppress and Hazes motion to suppress are
dismissed.
D. Redeclaration of Interference
This interference is herein re-declared to the following extent:
1. Hazes reissue application 10/192,1466, filed 10 July 2002 is added to the interference.
2. Original counts I and 2 are substituted with count 3.
3. Count 3 is:
Bries claim 82
or
Bries claim 83
4. The parties' claims corresponding to count 3 are:
Hazes 6,086,973 patent: 1-13
6 Hazes reissue application has been assigned to 3M. According to PTO records, the
assignment was executed on 12 June 2003 and recorded on I I July 2003.
Interference No. 104,8 3 3
Page No. 20
Hazes 10/192,146 application: 1-15
Bries: 68-85
E. Judgment
Junior party Hazes is not entitled to the benefit of its German Patent Application No. DE
197 26 375, filed 21 June 1997 for either its patent or reissue application. Accordingly, judgment
is entered against junior party Hazes. Furthermore, as discussed supra, in connection with Hazes
preliminary motion 1, Brics does not have written description for its claims 68-8 1. Therefore, it
is
ORDERED that judgment as to the subject matter of count 3 is herein entered against
junior party HANS HAZES;
FURTHER ORDERED that junior party HANS HAZES is not entitled to its U.S.
patent 6,086,973 claims 1- 13 or its reissue application 10/192,146 claims 1- 15 which correspond
to count 3;
FURTHER ORDERED that the examiner shall enter the Bries amendment adding
claims 82-85 to application 08/989,507;
FURTHER ORDERED that Bries claims 68-81 are unpatentable to Bries under 35
U.S.C. § 112, ý1;
FURTHER ORDERED that if there is a settlement agreement, the parties should note
the requirements of 35 U.S.C. § 135(c) and 37 CFR § 1.666; and
Interference No. 104,833
Page No. 21
FURTHER ORDERED that a copy of this judgment be filed in the respective involved
application or patent of the parties,
ýXALLY GARDNER LANE
Administrative Patent Judge
BOARD OF PATENT
SALLY C. MEDLEY APPEALS AND
Administrative Patent Judge INTERFERENCES
MICHAEL P. TIERNEY
Administrative Patent Judge
Interference No. 104,833
Page No. 22
cc (via Federal Express):
Attorney for HAZES & BRIES:
Charles L. Gholz
James R. Boler
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, P.C.
1940 Duke Street
Alexandria, Virginia 22314
Tel: (703) 412-3000
Fax: (703) 413-2220