Ex Parte Rohrmann

Board of Patent Appeals and Interferences

Jun 27, 2001

07925985 (B.P.A.I. Jun. 27, 2001)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 21
Filed by: Trial Section Merits Panel
Box Interference Filed
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JURGEN ROHRMANN,
Junior Party,
(Patent 5,391,789),
v.
HELMUT G. ALT, SYRIAC J. PALACKAL, KONSTANTINOS PATSIDIS,
M. BRUCE WELCH, ROLF. L. GEERTS, ERIC T. HSIEH,
MAX P. McDANIEL, GIL R. HAWLEY and PAUL D. SMITH,
Senior Party
(Application 09/197,761).
_______________
Patent Interference No. 104,626 (McK)
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and TORCZON, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
FINAL DECISION
A. Introduction
As the record makes clear, Rohrmann has conceded on the
issue of priority with respect to Count 2, the only count in the
Interference (Paper 18, page 2). The only issue remaining for
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consideration is whether Rohrmann claim 5 should be designated as
corresponding to Count 2. To that end, Alt has filed Alt
Preliminary Motion 1 (Paper 19) seeking to have Rohrmann claim 5
designated as corresponding to Count 2. Rohrmann filed an
opposition (Paper 20).
B. Facts
1. The interference was initially declared with
Count 1 (Paper 1, page 5).
2. Rohrmann claim 5 was designated as not
corresponding to the count, then Count 1 (Paper 1, page 5).
3. As a result of an amendment filed by Alt, and
which was entered by the board (37 CFR § 1.615(a)), there came a
time when the interference was redeclared to substitute Count 2
for original Count 1 (Paper 18).
4. Count 2 reads as follows (Paper 18, page 4):
Count 2
A method according to claim 6 of Rohrmann patent
5,391,789,
or
a method according to any of claims 78 and 90 and 96
of Alt application 09/197,761.
5. The claims of the parties are:
Rohrmann: 1-18
Alt '761: 42, 46, 48-49, 51-53, 78-83 and
90-101
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6. The claims of the parties which correspond to
Count 2, and therefore are involved in the interference
(35 U.S.C. § 135(a)), are:
Rohrmann: 6 and 9-18
Alt '761: 42, 46, 48 and 90-101
7. The claims of the parties which do not
correspond to Count 2, and therefore are not involved in the
interference, are:
Rohrmann: 1-5 and 7-8
Alt '761: 49, 51-53 and 78-83
8. Rohrmann claim 6, mentioned in Count 2, relates to
a method of polymerizing an olefin using a metallocene.
9. Alt claims 78 and 96, mentioned in Count 2, also
relate to method of polymerizing an olefin using a metallocene.
10. Alt claim 90, mentioned in Count 2, relates to a
method of polymerizing ethylene (ethylene is an olefin).
11. Rohrmann claim 5, not mentioned in Count 2,
relates to a method of making a metallocene; Rohrmann claim 5
does not relate to a method of polymerizing an olefin.
12. We will assume that the product produced by the
method of Rohrmann claim 5 can be used in the processes defined
by each of Rohrmann claim 6 and Alt claims 78, 90 and 96.
13. As noted earlier, Alt has filed a preliminary
motion seeking to have Rohrmann claim 5 designated as
corresponding to Count 2. 37 CFR § 1.633(c)(3).
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14. A party seeking to have a claim designated as
corresponding to a count, inter alia, must "[s]how that the claim
defines the same patentable invention as another claim whose
designation as corresponding to the count the moving party does
not dispute." 37 CFR § 1.637(c)(3)(ii).
15. In its preliminary motion, Alt argues that
"Rohrmann [c]laim 5 cannot be viewed as patentably distinct from
Alt's claim 101 and *** therefore Rohrmann's [c]laim 5 should be
designated as corresponding to *** Count 2" (Paper 19, page 3,
¶ 9).
16. Alt claim 101 is directed to a two step process.
a. The first step calls for a method of making a
metallocene.
b. The second step calls for using the
metallocene made in the first step to
polymerize an olefin.
17. Alt has not demonstrated that, within one year of
the issuance of the Rohrmann patent, any attempt was made to
amend its involved application to add a claim directed to a
method of making the metallocene.
C. Discussion
For the reasons which follow, we do not believe Alt is
entitled to the relief it seeks.
For the purpose of deciding Alt preliminary motion 1, we
will assume, without deciding, that under Rule 637(c)(3)(ii), Alt
was under a burden to show that the subject of Alt claim 101 is
1 Rohrmann contests this assumption.
2 In this respect, we note that Alt has made no attempt to involve in this
interference Rohrmann claims 1-4 directed to metallocene compounds.
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directed to the same patentable invention as Rohrmann claim 5 if
it is assumed that the subject matter of Alt claim 101 is prior
art vis-a-vis Rohrmann.
We will further assume, without deciding,1 that the method
of making the metallocene set out in Alt claim 101 is the same as
the method called for by Rohrmann claim 5.
If the two assumptions are correct, then it can be said that
Alt has demonstrated that the subject matter of Alt claim 101
anticipates the subject matter of Rohrmann claim 5 and therefore
Rohrmann claim 5 is directed to the same patentable invention as
Alt claim 101. Superficially, it might be said that Alt complied
with Rule 637(c)(3) and therefore is entitled to relief. An
analysis of the statute, however, will show otherwise.
The rules should not be read in a vacuum. Rather, they
should be interpreted consistent with applicable statutory
provisions. Rohrmann correctly notes in its opposition that at
this time Alt cannot present a claim to a method of making a
metallocene, because Alt did not present such a claim within one
year after the date the Rohrmann patent issued.2 35 U.S.C.
§ 135(b). Hence, Rohrmann reasons that Alt should not be allowed
to indirectly involve Rohrmann claim 5 in the interference long
after the § 135(b) bar has expired. We agree. It is not enough
to obtain relief that Alt may have complied with the procedural
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requirements of Rule 637(c)(3) if Alt does not also comply with
the statute. Alt has made no reasonable attempt to show that it
timely presented a claim directed to the same, or substantially
the same, invention as that defined by Rohrmann claim 5. We
decline to undertake the role of an advocate for Alt against
Rohrmann and search the record to determine if Alt timely
presented a claim consistent with the requirements of § 135(b).
Cf. Clintec Nutrition Co. v. Baxa Corp., 44 USPQ2d 1719, 1723
n.16 (N.D. Ill. 1997) (a court will not pour over the documents
to extract the relevant information, citing United States v.
Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (judges do not hunt for
truffles buried in briefs); Ernst Haas Studio, Inc. v. Palm
Press, Inc., 164 F.3d 110, 111-12, 49 USPQ2d 1377, 1378-79 (2d
Cir. 1999) ("Appellant's Brief is at best an invitation to the
court to scour the record *** and serve generally as an advocate
for appellant. We decline the invitation."); Bamberger v.
Cheruvu, 55 USPQ 1523, 1537 (Bd. Pat. App. & Int. 1998) (board
declined to search the record in the first instance to determine
whether there is evidence which might support a holding of
obviousness).
Because we do not designate Rohrmann claim 5 as
corresponding to the count, it becomes unnecessary for us to
3 E.g. (material in bold added and material in brackets and strikeout
deleted, vis-a-vis Count 2):
A method according to any of claims 5 or 6 [claim 6] of Rohrmann
patent 5,391,789,
or
a method according to any of claims 78 and 90 and 96 of Alt application
09/197,761.
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determine whether a broader count3 would be necessary if the
preliminary motion were to be granted. We will note that
Rohrmann has not conceded priority of subject matter as broad as
Rohrmann claim 5 and that it would be only fair to permit
Rohrmann to contest priority on the broader invention defined by
Rohrmann claim 5 if it were to be added to the interference.
Our denial of relief in this interference is without
prejudice to Alt seeking to invoke other remedies which may be
available to seek cancellation of Rohrmann claim 5, e.g., a
request for a reexamination. We express no views on the
appropriateness, or the merits, of other possibly available
remedies.
D. Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that Alt Preliminary Motion 1 is denied.
FURTHER ORDERED that judgment on priority as to Count 2,
the sole count in the interference, is awarded against junior
party JURGEN ROHRMANN.
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FURTHER ORDERED that junior party JURGEN ROHRMANN is not
entitled to a patent containing claims 6 and 9-18 (corresponding
to Count 2) of U.S. Patent 5,391,789, issued 21 February 1995,
based on application 07/925,985, filed 5 August 1992.
FURTHER ORDERED that a copy of this paper shall be made
of record in files of Alt application 09/197,761 and U.S. Patent
5,391,789.
FURTHER ORDERED that if there is a settlement agreement,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661.
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )
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104,626
cc (via First Class Mail):
Attorney for Rohrmann
(real party in interest
Targor BhmB):
Ashley I. Pezzner, Esq.
Rudolf E. Hutz, Esq.
CONNOLLY, BOVE, LODGE & HUTZ, LLP
1220 Market Street
Wilmington, DE 19899
Tel: 302-658-9141
Fax: 302-658-5614
E-mail: aip@cblhlaw.com
E-mail: reh@cbhllaw.com
Attorney for Alt
(real party in interest
Phillips Petroleum Company):
Edward L. Bowman, Esq.
Bion E. Hitchcock, Esq.
RICHMOND, HITCHCOCK, FISH & DOLLAR
Address for overnight delivery:
Edward L. Bowman
Phillips Petroleum Company
216 Patent and Library Bldg
Bartlesville, OK 74004
Tel: 918-661-0526 (Bowman)
Tel: 918-661-4667 (Hitchcock)
Fax: 918-661-8739
E-mail: elbowma@ppco.com
E-mail: behitch@ppco.com