Ex Parte SINK

Board of Patent Appeals and Interferences

Mar 18, 2003

07147068 - (J) (B.P.A.I. Mar. 18, 2003)

Interference No. 104,049
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 57
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
MAILED'
RONALD A. SINK
Junior Party, MAP
V.
PAT, & TM. OFFICE
BOARD OF PATENTAPPEALS RUSSELL SCOTT and JOHN E. TIFFANY AND PITERFEnENCEg
Senior Party.
Patent Interference No. 104,049
Before CAROFF, METZ AND HANLON, Administrative Patent Judizes.
CAROFF, Administrative Patent Judge.
JUDGMENT PURSUANT TO 37 CFR ý 1.640(e)
An order to show cause (Paper No. 53) was issued in this interference on Feb. 14, 2003,
pursuant to the provisions of 37 CFR § 1.640(d)(3), based on the fact that junior party Sink
alleged no date in its preliminary statement prior to the effective filing date accorded to Scott et
at., the senior party
Sink filed a timely response and a motion for testimony under 37 CFR § 1.635 (Paper No.
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Interference No. 104,049
55). Sink's response and motion for testimony are both fatally flawed and, therefore, are
dismissed for the following reasons:
The response to the show cause order does not request that a final hearing be set to review
any decision which is the basis for the show cause order, or to review any other issue decided in
the associated Decision on Motions (Paper No. 53).
Rather, for the first time in these proceedings, Sink raises the issue of "prosecution
laches" as a basis for challenging the patentability of Scott's involved claims. According to
Sink, the doctrine was articulated by the Federal Circuit in Symbol Technologies, Inc. v.
Lemelson Med. Educ, and Res. Fdn., 277 F.3d 1361, 61 USPQ2d 1515 (Fed. Cir. 2002), and
extended in In re Bogese, 303) F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002), cases decided on
Jan. 24, 2002 and Sept. 13, 2002, respectively.
Sink has not shown good cause why the issue of "prosecution [aches" could not have
been raised earlier in these proceedings by way of a miscellaneous motion under 37 CFR
§ 1.635.
Accordingly , the belatedly raised issue of "prosecution laches" will not be considered in
this proceeding. 37CFR § 1.645 (b).
Furthermore, we note that even if Sink had raised the "laches" issue in a timely manner,
the burden would have been on Sink to show not only a delay in prosecution of the senior party's
series of co-pending applications but, also, that the delay was an unreasonable delay attributable
to the senior party. In this regard, we note that the parent applications of Scott et al. were subject
to secrecy orders for over 20 years, a fact not recognized or addressed in the arguments presented
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Interference No. 104,049
in Sink's response.
The motion for testimony is dismissed since it fails to satisfy the mandatory requirements
of 3 7 CFR § 1.63 7 (b).
For the foregoing reasons, judgment on the record is in order and is rendered as follows:
YUDGMENT
Sink has failed to show good cause why judgment shOUld not be entered against Sink.
Accordingly, pursuant to the order to show cause of Feb. 14, 2003, judgment is hereby entered as
follows:
Judgment as to the subject matter of the sole count in issue is hereby awarded to Scott et
al., the senior party.
Accordingly, Sink is not entitled to his patent claims 5 and 7-9 corresponding to the
count.
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Interference No. 104,049
On the record before us, Scott et al. are entitled to a patent containing their claims 17 and
19-21 corresponding to the count.
L
MARC L. CAROFFý
d n udge
udge BOARD OF PATENT
ANDREW H. METZ APPEALS
Administrative Patent Judg AND
INTERFERENCES
ADýENE LEPIANE HANLON
Administrative Patent Judge
MLC/Ip
4
Interference No. 104,049
Atty for Ronald A. Sink:
Norman H. Zivin et al.
c/o Cooper & Dunham LLP
118 5 Avenue of the Americas
New York, NY 10036
Atty for Russell F. Scott, Jr.:
Allan M. Lowe
Lowe, Hauptman, Gilman & Berner, LLP
Suite 3 10
1700 Diagonal Road
Alexandria, VA 22314
5
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