Sannsv.Martinez

Board of Patent Appeals and Interferences

Nov 30, 1999

07920219 (B.P.A.I. Nov. 30, 1999)

Application Serial Number 07/920,219, filed on July1
24, 1992. Accorded benefit of Application Serial Number
07/371,640, filed on June 26, 1989. On this record, the
involved application is unassigned.
Application Serial Number 07/528,011, filed on May 23,2
1990, now U.S. Patent Number 5,036,118, issued on July 30,
1991. Accorded benefit of Application Serial Number
07/259,214, filed on October 17, 1988. On this record, the
involved patent is unassigned.
1
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not binding precedent of the Board.
Paper No. 56
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
FRANK SANNS, JR.
Junior Party1
v.
ELOY C. MARTINEZ
Junior Party2
____________
Interference No. 103,446
____________
Before CAROFF, DOWNEY and METZ, Administrative Patent Judges.
METZ, Administrative Patent Judge.
FINAL DECISION
Interference No. 103,446
2
The subject matter contested in this interference is
directed to a cured, filled polyurethane/polyurea polymer
composition having dispersed therein a particular mica filler.
The surface of the filled polymer composition, when painted
and compared with the painted surface of similarly painted
steel, exhibits a distinctness of image (DOI) within about 10
(ten) DOI units of the DOI of said similarly painted steel.
The cured and filled polymers are useful in the manufacture of
automobile parts such as fenders and doors. Automobile parts
manufactured from said polymers are lighter than comparable
metal parts which enable a reduction in the overall weight of
the finished automobile which yields improved fuel economy.
The specific interfering subject matter contested by
the parties is defined by the sole count in this interference,
Count 1, which is set forth as follows:
A filled polymer composition
comprising a polyurethane and/or
polyurea matrix having dispersed
therein a mica filler having a
thickness of less than about 1.5
micrometers and an aspect ratio of
greater than about 40, the surface of
the composition exhibiting a
distinctness of image when painted
that is within about 10 DOI units of
the distinctness of image of similarly
painted steel.
Interference No. 103,446
3
The claims of the parties which correspond to Count
1 are:
Sanns: Claims 9 through 11
Martinez: Claims 1 through 25
Interference No. 103,446
References to the Sanns record will be designated 3
as SR, followed by the record page number, and references
to the Sanns exhibits will be designated SX,
followed by the exhibit number.
4
Both parties filed briefs and Sanns filed a reply
brief. Both parties appeared for oral argument at final
hearing represented by their respective legal representatives.
No issue of interference-in-fact was raised.
The sole issue presented for our consideration in
this proceeding is priority of invention.
Sanns presented a record including deposition
testimony and associated documentary exhibits in support of
their case for priority . Martinez has elected to rely on his3
October 17, 1988, benefit priority date in this interference.
Sanns, as the junior party whose application was
copending with Martinez' U.S. application which matured to
Martinez' involved U.S. patent, bears the burden of proving
his case for priority by a preponderance of the evidence.
Morgan v. Hirsch, 728 F.2d 1449, 221 USPQ 193 (Fed. Cir.
1984); Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA
1976).
Interference No. 103,446
5
In order to be awarded priority in this
interference, Sanns must prove an actual reduction to practice
prior to October 17, 1988, Martinez' effective filing date.
Alternatively, Sanns could prevail by proving a conception of
the subject matter of
Interference No. 103,446
6
the count before Martinez' effective filing date of October
17, 1988, coupled with reasonable diligence just prior to
October 17, 1988, up to a reduction to practice (constructive
or actual) by Sanns. Jepson v. Egly, 231 F.2d 947, 109 USPQ
354 (CCPA 1956); Hull v. Davenport, 90 F.2d 103, 33 USPQ 506
(CCPA 1937); Wilson v. Sherts, 21 F.2d 1070, 28 USPQ 379 (CCPA
1936).
SANNS' CASE FOR PRIORITY
In his preliminary statement (Paper Number 8), Sanns
alleges he conceived of the invention of Count 1 in this
interference "on or about February 5, 1986" (see paragraph 6
of Paper Number 8) and that the "[a]ctive exercise of
reasonable diligence toward reducing the invention to practice
began on or about February 5, 1986" (see paragraph 8 of Paper
Number 8). Additionally, Sanns alleges that the invention "was
first actually reduced to practice on or about February 5,
1986" (see paragraph 7 of paper Number 8).
In his brief, however, Sanns has chosen to proceed
solely by attempting to prove that he is the first inventor of
the subject matter of Count 1 by proving an actual reduction
to practice prior to Martinez' effective filing date of
Interference No. 103,446
Reactive injection molding.4
Reinforced reactive injection molding.5
7
October 17, 1988. Accordingly, we shall limit our
consideration of Sanns' evidence for priority to the extent it
is relevant to proving his priority case based on his theory
that he actually reduced to practice the subject matter of
Count 1 before Martinez' effective filing date of October 17,
1988.
The facts concerning Sanns' actual reduction to
practice are not disputed by the parties. While working in
the Automotive RIM group at Bayer in 1985, Sanns became4
convinced that mica could be used as the filler material for
filled polyurethane and/or polyurea (SR201-204). Sanns
ordered some mica filler material from the J. M. Huber
Corporation (SX17(c)) and inspected the mica to determine its
physical properties (SR220, 223-225). Thereafter in February
1986, Marsh, a technician working for Sanns, prepared two sets
of plaques of polyurethane and/or polyurea in a RRIM machine5
using the mica from J. M. Huber as the filler (SR295, 409).
Marsh recorded the preparation of the plaques in his
laboratory notebook (SX9, SX10). Marsh forwarded the plaques
Interference No. 103,446
8
to Dzikowski, a technician working for Sanns, for testing,
including distinctness of image testing using a "glow box"
(SX7). Dzikowski recorded the formulations of the plaques
based on the information he received from Marsh (SX7).
Dzikowski performed "glow box" tests on the plaques and
compared them to steel panels similarly painted and found the
plaques prepared by Marsh possessed extraordinary distinctness
of image (DOI) (SX7, ¶'s 9, 10 and 15).
In a report to Sanns (SX 8), Dzikowski noted the
results he obtained and expressed his opinion that the plaques
gave the best DOI results he had ever seen. Dzikowski
strongly recommended to Sanns that he follow up on the plaques
as prepared. Both Dr. Taylor and Sanns received Dzikowski's
report (SR514, 515; SX20). Subsequently, in March 1986, Marsh
prepared a another set of plaques from a polyurethane and/or
polyurea filled with mica from the J.M. Huber corporation and
recorded the materials used to prepare the plaques in his
notebook (SX13). In May 1986, Dzikowski performed
paintability tests on the plaques prepared by Marsh in March,
including DOI measurements using a "glow box" (SX7, ¶22, SX11,
SX12). The second set of plaques also yielded a DOI within 10
Interference No. 103,446
9
DOI units of similarly painted steel. Dzikowski reported the
results for the second set of plaques to Sanns on May 2, 1986
(SX14).
After obtaining the first results of the DOI tests
in February 1986 from Dzikowski, Sanns prepared a memorandum
of invention on February 13, 1986 (SX21). Dr. Taylor, Sanns'
immediate supervisor, remembers reviewing the memorandum of
invention (SR516, 517). After the memorandum of invention was
prepared, the plaques were sent to Florida for weathering
tests (SR256).
In November 1987, Bayer became involved with Ford
Motor Company's project to prepare truck body parts from
plastic (SR263-266). Ford became interested in Bayer's
reinforced RIM urethanes using mica as a filler, although Ford
did not know what filler was used by Bayer. In March 1988,
molding trials were scheduled in Florence Kentucky but
actually took place in May 1988 (SX44; SX64).
In early 1988, Marsh prepared additional plaques
using Huber WG-2 mica filler (SR539-540; SX38; SX59)). In
April 1988, William Bain prepared the plaques for painting and
painted the plaques and used similarly painted steel panels
Interference No. 103,446
10
for control plaques (SR21; 23-25; SX2). Bain then took DOI
readings of the plaques and entered them in his notebook
(SR19; SX2). Bain prepared a report which included the
results of his testing. Both Dr. Taylor and Sanns reviewed
Bain's report on his efforts (SR295; SR540).
In April 1988, Sanns sent a memorandum to Mr. Preis,
Bayer's patent counsel, outlining some specifics concerning
further work related to his memorandum of invention (SX40).
Sanns was becoming frustrated with Preis because a patent
application had not yet been filed (SR402). Ultimately,
Sanns' first patent application directed to the subject matter
of the count in this interference was filed in June 1989.
In his brief, Sanns urges that he actually reduced
to practice an embodiment within the count not later than July
21, 1988, the date the parties have stipulated as the date it
was first appreciated by Sanns that the mica used by him in
the February 1986 and March 1988 plaques satisfied the
limitations of Count 1 with respect to the thickness and
aspect ratio of the mica filler (Sanns' main brief, p. 29).
Martinez urges that the date of an actual reduction to
practice is earlier than the date of the stipulation.
Interference No. 103,446
11
Specifically, Martinez argues that the February 1986 tests by
Dzikowski of the plaques prepared by Marsh at Sanns' direction
constitute an actual reduction to practice by Sanns (Martinez
Brief p. 7). Based on the date argued by Martinez to
represent the date of Sanns' earliest actual reduction to
practice, Martinez argues that the time from actually reducing
to practice the invention of Count 1 until filing the Sanns
application was so long and unreasonable as to raise an
inference of abandonment, suppression or concealment by Sanns.
More specifically, Sanns argues that in light of the
above-described plaque preparation and testing, considered
with the stipulations of the parties concerning the mica
filler used and the nature of the polymer in which the filler
was dispersed, we should find Sanns actually reduced to
practice an embodiment within the count of this interference
not later than July 21, 1988, the date of the stipulation
concerning the nature of the mica used. Martinez argues in
his brief that the activity in February and March 1986 by
Marsh and Dzikowski on behalf of Sanns constituted an actual
reduction to practice of an embodiment within the count
(Martinez Brief p.8). Martinez concedes the work performed on
Interference No. 103,446
12
behalf of Sanns in 1986 and Sanns' memorandum of invention
lack evidence of any appreciation of the limitation of the
count with respect to the particle size of the mica or its
aspect ratio (Martinez Brief p.8). Nevertheless, Martinez
urge that we should accept Sanns' uncorroborated testimony
that he had determined both the particle size and aspect ratio
for WG-2 mica in 1985 or 1986. Martinez urges that based on a
February 1986 actual reduction to practice, Sanns took more
than 40 months to file their first patent application on the
subject matter of the count. Martinez argues that the time
period is sufficiently long as to be "unreasonable" and,
therefore, raises an inference that Sanns abandoned,
suppressed or concealed his invention within the meaning of 35
U.S.C. § 102(g).
OPINION
It is by now well-settled that an actual reduction
to practice may not be established nunc pro tunc. Langer v.
Kaufman, 465 F2d. 915, 919-20, 175 USPQ 172, 174 (CCPA 1972);
Heard v. Burton, 333 F2d. 239, 243-44, 142 USPQ 97, 100 (CCPA
1964). Equally well-settled is the prerequisite that the
actual reduction to practice must include a contemporaneous
Interference No. 103,446
13
recognition and appreciation of the invention represented by
the count by the inventor at the time the reduction to
practice was made. Breen v. Henshaw, 472 F.2d 1398, 1401, 176
USPQ 519, 521 (CCPA 1973). There can be no actual reduction to
practice without proving a physical embodiment which includes
all the limitations of the count has been prepared. U.M. C.
Electronics Co. v. United States, 816 F.2d 647, 652, 2 USPQ2d
1465, 1468 (Fed. Cir. 1987).
While the parties have stipulated that the various
starting materials set forth in Marsh's notebooks, when
reacted together, would form a polyurethane and/or polyurea
(SR479, 480), the parties have also stipulated that Sanns did
not become aware of either the particle size or the aspect
ratio of the mica required by the count until July 21, 1988.
Thus, Sanns did not and could not have had an appreciation or
recognition of the requirements of the count with respect to
either the particle size or aspect ratio which was
contemporaneous with the activity in February 1986, March 1986
or May 1988.
According to Sanns' testimony, he instructed Marsh,
now deceased, to prepare polyurethane/polyurea plaques in a
Interference No. 103,446
14
RRIM machine using mica as a filler. Marsh's notebooks
reflect that he actually prepared such plaques in February and
March 1986 and again in early 1988. Marsh's notebooks were
recognized by Dr. Taylor and Dzikowski as authentic and Bain
also recognized the notebooks as being Marsh's. Dzikowski and
Bain's notebooks establish that the plaques containing WG-2
mica from J.M. Huber exhibited a DOI when painted that is
"within about 10 DOI units of the distinctness of image of
similarly painted steel." Dzikowski's report of February 13,
1986, also indicates that polyurethanes filled with mica
exhibited DOI's within the limitations of the count and his
report also indicated he was extremely impressed by the
results for the mica-filled polyurethanes. Dr. Taylor
recalled having seen Dzikowski's report. Dzikowski prepared a
similar report in May 1986, reflecting the results obtained
for the plaques prepared by Marsh in March 1986.
The testimony of Dr. Taylor, Dzikowski and Bain
adequately corroborates Sanns' testimony concerning the
production and successful testing in 1986 and again in 1988 of
plaques which, when considered with the stipulation concerning
the properties of J.M. Huber WG-2 mica, meet all the
Interference No. 103,446
15
requirements of the count in this interference as of July 21,
1988, the date of the stipulation. Lacotte v. Thomas, 758
F.2d 611, 225 USPQ 633, 634 (Fed. Cir. 1985); Knorr v.
Pearson, 671 F.2d 1368, 1373, 213 USPQ 196, 200 (CCPA 1982);
Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691, 695 (CCPA
1980). Accordingly, we find that the plaques prepared and
tested in February and March of 1986 and those prepared and
tested in March and May 1988, including the "glow box" test
results for said plaques, meet all the requirements of Count 1
not later than July 21, 1988, the date the parties have
stipulated Sanns learned from Dr. Gary Freeman from J.M. Huber
that WG-2 mica "satisfied the aspect ratio and thickness
limitations of the Count in interference."
We consider Martinez' argument that the activity by
Marsh on behalf of Sanns in 1986 constitutes an actual
reduction to practice to be unpersuasive. Martinez has
conceded in their brief that Sanns' own uncorroborated
testimony is insufficient as a matter of law to establish the
testimony is reliable (Martinez brief, p.2). Additionally,
the record establishes that neither Marsh nor Dzikowski nor
Interference No. 103,446
16
any other person at Bayer knew in 1986 the nature of the mica
filler used in the preparation and testing of the plaques.
While Sanns claims to have taken photographs of the
mica he allegedly measured, said photographs are not of record
in this proceeding. Additionally, nothing in Sanns' testimony
or in the record before us, evidences that Sanns appreciated
that WG-2 mica had a particle size of less than 1.5 microns or
an aspect ratio of greater than 40 as required by Count 1.
Indeed, Sanns' memorandum of invention only mentions the mica
by its proprietary name "WG-2" and does not satisfy Count 1
with respect to either particle size or aspect ratio. Sanns'
notebook page attached to the memorandum of invention only
speaks of an aspect ratio of "greater than 20 or 30" and a
particle size "smaller than 1/64 inch".
In our opinion, Martinez is attempting to prove,
nunc pro tunc, that the work performed for Sanns in 1986 and
1988 is transformed via the stipulation of the parties to an
actual reduction to practice relating back to the date of the
actual work. However, as we have stated above, establishing a
reduction to practice, nunc pro tunc, is not possible.
Interference No. 103,446
17
We have also considered Sanns' memorandum of
invention (SX21) as evidence of Sanns' conception of the
subject matter of Count 1 in February 1988. However, for
reasons set forth above, the memorandum of invention and
Sanns' attached notebook page do not establish an appreciation
by Sanns as of the date of the memorandum of the limitations
of the count with respect particle size and aspect ratio. The
attached notebook page alludes only to "smaller particle size
than 1/64"" and that "aspect ratio is important for physical
reinforcement, and should be > 20 or 30." While the attached
notebook page and the memorandum refer to WG-2 mica from J.M.
Huber, appreciation of the properties of that product has been
stipulated by the parties to have occurred not later than July
21, 1988. There is no other evidence in this record to which
Martinez has directed our attention which establishes Sanns
knew of the properties as required by the count before the
stipulated date.
Accordingly, we find that Sanns, the junior party,
has established by a preponderance of the evidence, that he
actually reduced to practice an embodiment within the subject
matter of Count 1 not later than July 21, 1988. Because
Interference No. 103,446
18
Martinez, the senior party has elected not to put on a
priority case of his own, Sanns shall be denominated the first
inventor of the subject matter of Count 1 and judgment issued
in his favor unless Martinez proves that Sanns abandoned,
suppressed or concealed his invention. 35 U.S.C. § 102(g)
(1999).
ABANDONMENT, SUPPRESSION OR CONCEALMENT
Although Sanns bears the burden of proving priority
of invention by a preponderance of the evidence (which burden
we have held he has sustained), the burden of proving by a
preponderance of the evidence that Sanns suppressed or
concealed their invention within the meaning of 35 U.S.C. §
102(g) falls upon Martinez, the senior party. Gallagher v.
Smith, 206 F.2d 939, 99 USPQ 132 (CCPA 1953). There is no
dispute that Martinez timely filed his notice of his intention
to argue that Sanns abandoned, suppressed or concealed an
actual reduction to practice. See 37 C.F.R. § 1.632 (1998).
We agree with Martinez that where there is an
"unreasonable" period of delay between an actual reduction to
practice and the filing of an application for patent there
exists a basis for inferring an intent to suppress or conceal
Interference No. 103,446
19
the invention. Lutzker v. Plet, 843 F.2d 1364, 6 USPQ2d 1370
(Fed. Cir. 1988); Correge v. Murphy, 705 F.2d 1326, 217 USPQ
753 (Fed. Cir. 1983); Shindelar v. Holdeman, 628 F.2d 1337,
207 USPQ 112 (CCPA 1980); Horwath v. Lee, 564 F.2d 948, 195
USPQ 701 (CCPA 1977); Peeler v. Miller, 535 F.2d 647, 190 USPQ
117 (CCPA 1976); Steinberg v. Seitz, 517 F.2d 1359, 186 USPQ
1359 (CCPA 1975); Young v. Dworkin, 489 F.2d 1277, 180 USPQ
388 (CCPA 1974); Brokaw v. Vogel, 429 F.2d 476, 166 USPQ 428
(CCPA 1970); English v. Heredero, 200 USPQ 597 (Bd.Pat.Int.
1978). While the question of whether or not Sanns abandoned,
suppressed or concealed his invention is an ultimate
conclusion of law, it is based on the particular facts of this
case just as every question of suppression or concealment is
founded on the particular facts of each case. Brokaw, 429
F.2d at 480, 166 USPQ at 430, 431.
Assuming that Martinez satisfies his burden of
persuasion and establishes that the time period involved under
the facts of this case was prima facie unreasonably long,
Sanns may still overcome the presumption by showing sufficient
activity during the time period involved towards perfecting or
improving his invention or other activities which "excuse,
explain or justify the delay." Young, 489 F.2d at 1281, 180
Interference No. 103,446
20
USPQ at 391 n.3 citing with approval Frey v. Wagoner, 87 F.2d
212, 32 USPQ 239 (CCPA 1937); Steinberg, 517 F.2d at 1364, 186
USPQ at 213; Peeler, 535 F.2d at 655, 190 USPQ at 123;
Horwath, 564 F.2d at 952, 195 USPQ at 705; Shindelar, 628 F.2d
at 1341, 207 USPQ at 116; Correge, 705 F.2d at 1329, 217 USPQ
at 755; Lutzker, 843 F.2d at 1367, 6 USPQ2d at 1371.
"[W]ithout an actual reduction to practice there is
no invention in existence which can be abandoned, suppressed,
or concealed." Peeler, 535 F.2d at 651, 190 USPQ at 120.
Thus, because we have already found that Sanns reduced an
embodiment within Count 1 before Martinez' effective filing
date, the starting point of our analysis on this issue begins
with what is the date which Sanns has proven for an actual
reduction to practice.
We have held above that Sanns' earliest date for an
actual reduction to practice is July 21, 1988. Based on that
date, the time elapsed between reducing to practice an
embodiment within the count and Sanns filing his application
becomes 11 (eleven) months. Martinez has not even addressed
in his brief let alone proved whether or not 11 (eleven)
months constitutes such an unreasonable amount of time as to
raise an inference of an abandonment, suppression or
concealment of the subject matter of the count. On that basis
alone, we find that Martinez has not met his burden of
Interference No. 103,446
21
persuasion. Nevertheless, on the facts before us, in this
particular case, we also find that the eleven months between
Sanns actual reduction to practice of an embodiment within the
count and the filing of an application for patent, is not so
long or unreasonable as to raise an inference of abandonment,
suppression or concealment.
Notwithstanding our conclusion above, Martinez could
still prevail if he established that other evidence in this
record proved that Sanns reduced his invention to practice
before the July 21, 1988, stipulation date and proved that the
time between that earlier reduction to practice and Sanns'
filing date was so long as to raise an inference that Sanns
abandoned, suppressed or concealed his invention. Martinez
has, in fact, argued that the February 1986 plaques prepared
by Marsh after testing by Dzikowski established the plaques
had a DOI within 10 DOI units of similarly painted steel,
constituted an actual reduction to practice of the subject
matter of Count 1.
Nonetheless, we have already held that Sanns did not
prove that he had a recognition or appreciation in 1986 of the
limitations in Count 1 regarding both the particle size of the
mica and the aspect ratio of the mica. Absent such
recognition by Sanns, we have also held that the actual
reduction to practice by Sanns, based on the work performed in
Interference No. 103,446
22
1986, becomes the date of the parties' stipulation concerning
the WG-2 mica used in 1986, that is, July 21, 1988. Once
again, we remind Martinez that the stipulation does not, based
on the stipulation, relate back to the work performed in 1986
and transform it, nunc pro tunc, to an actual reduction to
practice.
Martinez' argues that Sanns subsequent work in 1988
was directed to commercialization and thus may not be relied
on as activity which excuses the delay. However, the work
performed in March 1988 was before July 21, 1988, the date on
which we have found Sanns actually reduced to practice an
embodiment within Count 1. Accordingly, at the time of the
work there was not yet an actual reduction to practice of the
subject matter of the count. While the plaques tested,
admittedly, required further development and improvement
before they were considered to be commercially acceptable,
there is also no requirement that to constitute an actual
reduction to practice the invention, when tested, be in a
commercially satisfactory or commercially complete stage of
development. In re Anthony, 414 F.2d 1383, 162 USPQ 594 (CCPA
1969).
Martinez has also argued that Sanns work from
February 1986 does not include mold release agents but Sanns'
claims corresponding to the count do. In view of our holding
Interference No. 103,446
The record in this interference does not establish 6
that either of the involved parties' respective application
and patent are assigned. The parties are ordered within 10
(ten) days of the date of this opinion to file the appropriate
paper under 37 C.F.R. § 1.602(c).
23
that Sanns did not reduce to practice an embodiment within the
count until July 21, 1988, Sanns work in 1986 is not relevant
to the time period in question. However, we observe that
there is no requirement that the physical embodiment relied
upon as an actual reduction to practice include every
essential limitation of a party's claims corresponding to the
count. Rather, the physical embodiment relied on as an actual
reduction to practice must include every essential limitation
of the count. Correge, 705 F.2d at 1329, 217 USPQ at 755.
We have not overlooked Martinez' alternative
position that Sanns' had a deliberate policy directed to
concealing his invention from the public (Martinez' brief,
p.6, 7, 9-11). To the extent the concealment was by Bayer,
Martinez suggests that Bayer's action is imputable to Sanns,
the inventor (Martinez brief, p.9, f.n. 9). Nevertheless,6
the alleged deliberate policy of concealment occurred at a
time, February "1986 until at least the middle of 1988"
(Martinez brief p.10), when Sanns had not yet reduced to
practice an embodiment within Count 1. As we stated above,
without an actual reduction to practice there can be no
Interference No. 103,446
24
abandonment, suppression or concealment of an actual reduction
to practice.
Moreover, as the party urging that Sanns
deliberately concealed his invention, Martinez bears the
burden of providing proof of specific intent where, as here,
the time period between reducing the invention to practice and
filing an application for patent is not unreasonable and does
not raise an inference of intent to suppress or conceal.
Peeler, 535 F.2d at 653, 190 USPQ at 122; Dewey v. Lawton, 347
F.2d 629, 146 USPQ 187, 189 (CCPA 1965). We find, on this
record, that Martinez has not met his burden of persuasion on
this issue.
MARTINEZ' MOTION TO STRIKE
In Paper Number 44, Martinez has moved to strike the
portions of Sanns' brief which allege that Martinez derived
the invention of Count 1 from Sanns. As correctly noted by
Martinez in his motion, Sanns has not alleged derivation by
Martinez in his preliminary statement as required by 37 C.F.R.
§ 1.625 and therefore it may not properly be raised before us
in Sanns' brief. 37 C.F.R. § 1.655.
Accordingly, Martinez' motion is herein DISMISSED as
moot.
JUDGMENT
Interference No. 103,446
25
Having decided all the issues properly raised by the
parties in their briefs, it is now appropriate for us to enter
judgment in this interference pursuant to our authority under
37 C.F.R. § 1.658(a). Accordingly:
Judgment as to the subject matter of Count 1 in
this interference is awarded to Frank Sanns, Jr., the junior
party. Frank Sanns, Jr., the junior party, is entitled to a
patent containing claims 9 through 11 of his involved
application corresponding to Count 1.
Interference No. 103,446
26
Judgment as to the subject matter of Count 1 in this
interference is awarded against Eloy C. Martinez, the senior
party. Eloy C. Martinez, the senior party, is not entitled to
his involves patent containing claims 1 through 25
corresponding to Count 1.
MARC L. CAROFF )
Administrative Patent Judge)
)
)
)
)
MARY F. DOWNEY ) BOARD OF PATENT
Administrative Patent Judge) APPEALS
) AND
) INTERFERENCES
)
)
)
ANDEW H. METZ )
Administrative Patent Judge)
AHM/dal
Interference No. 103,446
27
Attorney for Sanns:
Bryan, Cave, McPheeters
and McRoberts
245 Park Ave.
New York, NY 10167-0034
Attorney for Martinez:
The Dow Chemical Company
P.O. Box 1967
Midland, MI 48641-1967