Stice et al.v.Campbell et al.

Board of Patent Appeals and Interferences

Feb 11, 2005

09989126 (B.P.A.I. Feb. 11, 2005)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 94
Filed by: Trial Section Merits Panel
Mail Stop Interference Filed
P.O. Box 1450 11 February 2005
Alexandria, VA 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
(Administrative Patent Judge Mark Nagumo)
_______________
STEVEN L. STICE,
JOSE CIBELLI, JAMES ROBL,
PAUL GOLUEKE, F. ABEL PONCE de LEON
and D. JOSEPH JERRY,
Junior Party,
(Patent 6,235,970 and
Reissue Application 10/833,993),
v.
KEITH HENRY STOCKMAN CAMPBELL
and IAN WILMUT,
Senior Party,
(Application 09/989,126).
_______________
Patent Interference No. 105,192
_______________
Before: MCKELVEY, Senior Administrative Patent Judge, LANE, and
NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
JUDGMENT
Interference 105,192 Paper 94
Stice v. Campbell
-2-
I. Introduction
The following findings of fact are supported by a
preponderance of evidence in the record.
1. As a result of the findings of fact and conclusions of
law set out in Paper 93 (Decision – substantive motions) of this
interference, Stice is not entitled to a patent to any claims of
its involved U.S. patent No. 6,235,970.
2. As a result of the findings of fact and conclusions of
law set out in Paper 93 (Decision – substantive motions) of this
interference, Stice is not entitled to a patent to any claims of
Stice reissue application 10/833,993, which is based on the Stice
6,235,970 patent.
III. Discussion
An interference is a proceeding to determine whether or not
a patent may be issued to an applicant based on an application,
all the claims of which are allowable but for the possibility
that another first invented the same subject matter. 35 U.S.C.
§ 102(g). Cf. Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221
USPQ 196, 200 (Fed. Cir. 1984) ("[n]o interference in fact means
that there is no interfering subject matter, that Case's patent
is no impediment to granting CPC the claims of its application.")
Stice is not entitled to any of its patented claims
Interference 105,192 Paper 94
Stice v. Campbell
-3-
corresponding to the count: thus, Stice patent 6,235,970 is not
an impediment to the issuance of a patent to Campbell based on
the 09/989,126 involved application. Similarly, Stice is not
entitled to a patent on any of the claims in its reissue
application: Thus, the Stice reissue application is not an
impediment to the issuance of a patent to Campbell based on the
10/833,993 reissue application. Moreover, Campbell, as the
senior party, is presumed to be entitled to the decision on
priority.
Under these circumstances, no purpose would be served by
proceeding to a priority contest in this interference.
II. Order
In view of the findings of fact and conclusions of law set
out in Paper 93 (Decision – substantive motions) of this
interference, it is:
ORDERED that Steven L. Stice, Jose Cibelli, James Robl,
Paul Golueke, F. Abel Ponce de Leon, and D. Joseph Jerry are not
entitled to a patent containing claims 1–21 of U.S. Patent No.
6,235,970.
FURTHER ORDERED that Steven L. Stice, Jose Cibelli,
James Robl, Paul Golueke, F. Abel Ponce de Leon, and D. Joseph
Interference 105,192 Paper 94
Stice v. Campbell
-4-
Jerry are not entitled to a patent on claims 1–11, 13 and 15–21
of reissue application 10/833,993.
FURTHER ORDERED that this judgment is final for
purposes of appeal regarding the status of Stice's 6,235,970
patent.
FURTHER ORDERED that this paper be given an appropriate
number and placed in the patent file of U.S. Patent 6,235,970, in
the application file of 09/989,126, and in the reissue
application file of 10/833,993.
FURTHER ORDERED that the reissue application is
returned to the jurisdiction of the primary examiner for action
not inconsistent with this decision.
FURTHER ORDERED that the attention of Campbell and the
primary examiner is directed to related cases 09/989,178 and
09/989,125, both currently suspended;
Interference 105,192 Paper 94
Stice v. Campbell
-5-
FURTHER ORDERED that if there is a settlement, the
attentions of the parties are directed to 35 U.S.C. § 135(c) and
37 CFR § 41.205.
___________________________________)
FRED E. McKELVEY )
Senior Administrative Patent Judge )
)
)
) BOARD OF
___________________________________)PATENT APPEALS
SALLY GARDNER LANE ) AND
Administrative Patent Judge )INTERFERENCES
)
)
) TRIAL SECTION
___________________________________) MERITS PANEL
MARK NAGUMO )
Administrative Patent Judge )
Alexandria, VA
11 February 2005
cc: via first class mail:
Counsel for Stice:
Ronald A. Daignault, Esq.
MERCHANT & GOULD, P.C.
1101 30th Street, N.W.,
Suite 500
Washington, DC 20007
Phone: 202-625-8380
Fax: 202-625-8381
Counsel for Campbell:
Kenneth J. Meyers, Esq.
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
1300 I Street, N.W.,
Suite 700
Washington, DC 20005
Phone: 202-408-4000
Fax: 202-408-4400