Ex Parte Sanada

Board of Patent Appeals and Interferences

Jun 19, 2003

09727767 (B.P.A.I. Jun. 19, 2003)

THIS OPINION IS NOT BINDING PRECEDENT OF THE BOARD
Filed by: Trial Section Merits Panel Paper No. 41
Box Interference
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
OFSAW X E LE %j
KAZUO SANADA,
lJUN 1 9 2003
Junior Party,
(Patent No. 6,352,379)' PAT. & TR OFFICE
BOARD OF PATENT APPEALS
V. AND INTERFERENCE3
JAMES H. REYNOLDS, DAVID H. LEVY, and
MARK E. IRVING
Senior Party,
(Application 09/592,243)'
Patent Interference No. 105,029
Before LEE, MEDLEY and TIERNEY, Administrative Patent Judges.
LEE, Administrative Patent Judg
Memorandum Opinion and Judgmen
Based on application 08/727,767, filed December 4, 2000. The real party in interest
is Fuji Photo Film Co., Ltd.
2 Filed June 13, 2000. The real party in interest is Eastman Kodak Company.
Interference No. 105,029
Sanada v. Reynolds
Discussion
On June 18, 2003, junior party Sanada filed a statutory disclaimer under 37 CFR § 1.321
executed by the assignee of Sanada's involved patent in this interference, Patent No. 6,352,379.
By that paper, thejunior party has disclaimed all claims 1-31 of Patent No. 6,352,379. The
original disclaimer document together with an attached request to charge a deposit account will
be placed in the official file of the junior party's involved patent for appropriate processing and a
copy will be retained in the interference file. Claims 1-31 of Patent No. 6,352,379, are all the
claims of the junior party's involved patent which correspond to the count.
Also on June 18, 2003, junior party Sanada filed a motion referring to 37 CFR
§ 1.662(a) and the statutory disclaimer of claims 1-3 1, requesting entry of adverse judgment
against Sanada. Per 37 CFR § 1.662(a), the filing by a party of a written disclaimer of the
invention defined by a count will be treated as a request for entry of adverse judgment. Because
of the junior party's reference to 37 CFR § 1.662(a), we will construe the disclaimer filed by the
junior party as a written disclaimer of the invention defined by the count, in addition to a
disclaimer of claims 1-31 which correspond to the count.
The request for entry of adverse judgment is granted.
Judemen
It is
ORDERED that judgment as to the subject matter of Count I is herein entered against
junior party KAZUO SANADA;
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0
Interference No. 105,029
Sanada v. Reynolds
FURTHER ORDERED that junior party KAZUO SANADA is not entitled to its patent
claims 1-31 which correspond to the count;
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
FURTHER ORDERED that a copy of this judgment be filed in the respective involved
application or patent of the parties.
meson
Lee
At imistrative Patent Judge
BOARD OF PATENT
Sally C. Aedhey APPEALS
Administrative Patent Judge AND
INTERFERENCES
Administrative Patent Judge
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Interference No. 105,029
Sanada v. Reynolds
By Facsimile
Counsel for Senior Party Reynolds:
585-263-1600 (Fax)
Michael L. Goldman, Esq.
Nixon Peabody LLP
1300 Clinton Square
Rochester, New York 14604
Counsel for Junior Party Sanada:
202-293-7860 (Fax)
Susan Perng Pan, Esq.
SUGHRUE, MION, ZINN, MACPEAK
& SEAS, PLLC
2 100 Pennsylvania Avenue, N.W.
Washington, D.C. 20037-3213
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