HONGv.STORM

Board of Patent Appeals and Interferences

Jul 15, 1997

07936758 (B.P.A.I. Jul. 15, 1997)

Patent 5,344,677, granted September 6, 1994, based on1
Application 07/936,758, filed August 27, 1992.
Application 08/046,470, filed April 13, 1993. 2
1
Paper No. 21
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
GILBERT H. HONG,
Junior Party,1
v.
GLENN E. STORM,
Senior Party.2
______________
Patent Interference No. 103,636
_______________
Before URYNOWICZ, RONALD SMITH, and MARTIN, Administrative
Patent Judges.
URYNOWICZ, Administrative Patent Judge.
Interference No. 103,636
2
FINAL DECISION
On September 24, 1996, the party Storm filed a
preliminary motion under 37 CFR § 1.633(a) for judgment that
the sole corresponding claim of the party Hong is unpatentable
to Hong under 35 U.S.C. §§ 102(a) and 102(b) as being
anticipated by Japanese Kokai No. 2-250,055 to Sugimoto (Paper
No. 8). On October 9, 1996, the party Hong filed an
opposition to the motion of Storm consisting of the sole
argument that the motion should be denied because "Neither the
translation nor the purported Kokai have been
authenticated..." (Paper No. 11). In its reply, Storm
indicated that it considers Hong's objection unfounded but, at
the same time, filed a certified copy of the Japanese Kokai
and a Verification of Translation. (Paper No. 13).
On February 7, 1997, the Administrative Patent Judge
(APJ) issued a Decision on Preliminary Motions (Paper No. 15).
In that decision Storm's motion for judgment under 37 CFR §
1.633(a) was granted (item I.) and a motion of Storm to
redefine this proceeding was dismissed as moot (item II.). In
item I., the APJ indicated that (1) Hong's objection to the
motion was overcome by Storm's filing of a certified copy of
Interference No. 103,636
3
the Japanese Kokai and a verification of translation, (2)
Storm's motion was unopposed on its merits and (3) the motion
is granted based on the showing made in the motion. In the
decision, Hong was ordered to show cause under 37 CFR §
1.640(d)(1) why judgment should not be entered against it
because the decision on Storm's motion for judgment under 37
CFR § 1.633(a) was dispositive of the interference. Not
having received a response to the order in
the time set, the Board issued judgment against Hong on March
27, 1997.
A copy of the Decision on Preliminary Motions was not
received by Hong. In a letter mailed April 16, 1997, the APJ
acknowledged that Hong’s copy had been returned to the Board
undelivered. At that time, the judgment of March 27, 1997 was
vacated, a copy of the Decision on Preliminary Motions was
mailed to Hong and the junior party was given twenty days to
respond to the order to show cause contained therein.
In response to the order, Hong filed a paper titled
THE PARTY HONG'S RESPONSE TO ORDER TO SHOW CAUSE MAILED APRIL
16, 1997 (Paper No. 20), which paper falls within the
Interference No. 103,636
Rule 640(e)(1)(ii) reads as follows:3
(e) When an order to show cause is issued under
paragraph (d) of this section, the Board shall enter
judgment in accordance with the order unless, within
20 days after the date of the order, the party against whom
the order issued files a paper which shows good cause
why judgment should not be entered in accordance
with the order.
(1) If the order was issued under paragraph (d)(1)
of this section, the paper may:
(i) Request that final hearing be set to review any
decision which is the basis for the order as well as any
other decision of the administrative patent judge that
the party wishes to have reviewed by the Board at final
hearing or
(ii) Fully explain why judgment should not be
entered.
4
provisions of 37 CFR § 1.640(e)(1)(ii) . In answer to Hong's3
response to the order, Storm filed a reply provided for under
37 CFR § 1.640(e)(2) (Paper No. 19). Whereas neither party
requested a final hearing, the decision of the APJ that is the
basis for the order to show cause is before us for review
based on the contents of Hong's paper and Storm's reply. 37
CFR § 1.640(e)(4).
Positions of the Parties
Hong argues it was not appropriate for the APJ to
Interference No. 103,636
5
simultaneously rule on its evidentiary objection to the
Japanese Kokai and the merits of Storm's motion for judgment
because Hong was not given an opportunity to address the
merits after Storm's reply and after the Board's ruling on the
objection. The junior party contends that the APJ should have
decided the evidentiary objection alone and then should have
provided the junior party an opportunity to oppose the merits
of Storm's motion rather than rule on its merits
simultaneously. Hong then argues in its response that Storm's
motion for judgment is without merit and urges that judgment
should not be entered against it.
Hong no longer asserts an evidentiary objection to the
Japanese Kokai.
Interference No. 103,636
6
Storm contends that it was incumbent on Hong to provide a
substantive response to Storm's motion for judgment when it
filed its opposition to the motion. In support of its
contention, the junior party draws attention to the fact that
37 CFR § 1.638(a) provides that an opposition shall (1)
identify any material fact set forth in the motion which is in
dispute and (2) include an argument why the relief requested
in the motion should be denied. Storm asserts that Hong's
opposition was silent in both respects and that it is too late
for Hong to now make a showing on the merits of the senior
party's motion.
Opinion
The question before us is whether an opponent can raise a
new matter in a response filed under 37 CFR § 1.640(e)(1)(ii)
to an order to show cause issued against it under 37 CFR §
1.640 (d)(1). In answering that question, we must decide
whether the argument of an opponent provided for under 37 CFR
§ 1.638(a) should include all issues which the party is aware
of at the time, and which it might later wish to argue under
37 CFR
§ 1.640(e)(1)(ii).
Interference No. 103,636
7
We are of the opinion that the junior party is not
entitled to be heard on the merits of its argument relating to
the Japanese Kokai which was first presented in its response
to the order to show cause.
Interference No. 103,636
8
A party is not entitled to raise for consideration at
final hearing any matter not raised by the party in a timely
filed opposition to a motion under 37 CFR §§ 1.633 or 1.634.
37 CFR
§ 1.655(b). This decision is not a final decision under 37
CFR
§ 1.658. However, as a decision under 37 CFR § 1.640(e)(4),
it involves an alternative procedure available to a party for
review of matters properly raised under 37 CFR §§ 1.633 or
1.634. By analogy to Rule 655(b), Hong is not entitled to
argue the merits of the finding of unpatentability over the
Japanese Kokai at this time because it did not so argue in its
opposition to Storm's motion.
The sole exception to the above provision of Rule 655(b)
is when a party is able to show good cause why the issue was
not properly raise by a timely filed opposition. We think
that such an exception is available to a party in Hong's
position. How-ever, the fact that Hong opposed Storm's motion
for judgment on a procedural ground, its evidentiary
objection, did not somehow excuse Hong from providing a
complete opposition. In no way was Hong precluded from
simultaneously arguing the merits of Storm's motion in its
Interference No. 103,636
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opposition. That Hong might not prevail on its evidentiary
objection was readily foreseeable and something which Hong
should have guarded against.
Hong's failure to provide a complete opposition is
contrary to the public interest in avoiding piecemeal
prosecution of interferences, Pritchard v. Loughlin, 361 F.2d
483, 487, 149 USPQ 841, 844 (CCPA 1966), and to the spirit and
scope of the new rules which have been implemented to provide
"the just, speedy and inexpensive determination of every
interference." 37 CFR
§ 1.601. To allow a junior party such as Hong to piecemeal
its opposition is to allow a party the opportunity to control
a proceeding and to open the door to harassment of one party
by another by effectuating procedural delay. This would
diminish the APJ's control over an interference, contrary to
the provisions of 37 CFR § 1.610(c), and defeat the goal of
achieving the just, speedy and inexpensive determination of
interferences.
Whereas Hong's response to the order to show cause fails
to show good cause why judgment should not be entered against
it, because its arguments on the merits in its response are
entitled to no consideration, judgment against Hong under 37
Interference No. 103,636
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CFR § 1.640 (e)(4) is now proper.
Interference No. 103,636
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Judgment
Judgment as to the subject matter of the count in issue
is awarded to Glenn E. Storm, the senior party. On the
present record, the party Storm is entitled to a patent with
its claims 1-18 corresponding to the count. The party Hong is
not entitled to its patent with its claim 3.

STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
RONALD H. SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN C. MARTIN )
Administrative Patent Judge )

Interference No. 103,636
12
Junior:
Thomas E. Schatzel
LAW OFFICES OF THOMAS E. SCHATZEL
A Professional Corporation
16400 Lark Avenue, Suite 300
Los Gatos, CA 95032
Senior:
David H. Judson
Hughes & Luce, L.L.P.
1717 Main Street, Suite 2800
Dallas, Texas 75201
Interference No. 103,636
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SMU/jrg