Wangv.Tucholski

Board of Patent Appeals and Interferences

Jun 18, 1999

07308210 (B.P.A.I. Jun. 18, 1999)

Application 07/730,712, filed July 16, 1991. Assignors to1
Duracell International Inc.
Application 07/641,394, filed January 15, 1991. Assignors to2
Eveready Battery Co., Inc., St. Louis, MO.
Application 07/504,504, filed April 4, 1990, now U.S. Patent3
No. 5,059,895, issued October 22, 1991. Assignors to Eastman Kodak
Co.
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journal and (2) is not binding precedent of the Board.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. 801
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
CHI-CHUNG WANG, TERRY C. EISENSMITH, CHARLES E. KIERNAN
AND ROBERT L. MILANESE
Junior Party,1
v.
GARY R. TUCHOLSKI
Junior Party,2
v.
RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (PATENT)
Junior Party,3
Interference No. 103,036
Reissue Application 07/942,973, filed September 10, 1992. 4
Accorded Benefit of U.S. Applications 07/504,504, filed April 4,
1990, and 5,059,895, issued October 22, 1991. Assignors to Eastman
Kodak Co.
Application 07/308,210, filed February 8, 1989, now U.S.5
Patent No. 5,015,544, issued May 14, 1991. Assignors to Strategic
Energy, Ltd.
Reissue Application 07/963,915, filed October 20, 1992. 6
Accorded Benefit of U.S. Application No. 07/308,210, filed
February 8, 1989, now Patent No. 5,015,544, issued May 14, 1991.
Assignors to Strategic Energy Ltd.
-2-
RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (REISSUE)
Junior Party,4
v.
JAMES R. BURROUGHS AND ALAN N. O’KAIN (PATENT)
Senior Party,5
JAMES R. BURROUGHS AND ALAN N. O’KAIN (REISSUE)
Senior Party.6
____________
Interference No. 103,036
____________
FINAL HEARING: MAY 29, 1997
____________
Before URYNOWICZ, RONALD H. SMITH, and SOFOCLEOUS, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
Interference No. 103,036
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FINAL DECISION WITH RESPECT TO THE PARTY TUCHOLSKI
The subject matter of this interference relates to a
battery with a strength indicator. The count of this
interference is as follows:
Count 1
A battery having a label with an integral voltmeter; wherein the
voltmeter comprises:
A) a dielectric layer;
B) a conductive layer above or below the dielectric layer; and
C) a temperature sensitive color indicator layer in thermal
contact with the conductive layer, characterized in that 1) the
conductive layer has i) sufficient heat generating capacity to
affect a change in the temperature sensitive color indicator
layer and ii) sufficient thermal insulating means under one of
its surfaces to overcome heat sinking when the voltmeter is in
contact with a battery having an electrically conducting housing
and 2) the voltmeter includes means for forming an electrical
switch with the electrically conductive battery housing.
The party Wang et al.'s claims 22 to 24 and 43 to 63,
the party Tucholski's claims 1 to 35 and 46 to 70, the party
Cataldi et al.'s patent claims 9 to 29, the party Cataldi et
al.'s reissue claims 9 to 25 and 28 to 40, the party Burroughs et
al.'s patent claims 1 to 11 and the party Burroughs et al.'s
reissue claims 13 to 51 correspond to the count.
Interference No. 103,036
In an order, dated December 12, 1994 (Paper No. 77), the APJ7
in charge of the interference at that time authorized the parties to
file comments in support of or in opposition to a motion directed at
another party.
This section reads, in part, as follows:8
§ 1.640 Motions, hearings and decision, redeclaration of
interference, order to show cause.
* * * * *
(d) An administrative patent judge may issue an order to
show cause why judgment should not be entered against a party when:
* * * * *
(3) The party is a junior party whose preliminary
statement fails to overcome the effective filing date of another
party.
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In Interlocutory Order No. 2, dated May 10, 1996 (Paper
No. 494), the Administrative Patent Judge (APJ) listed and
acknowledged the 91 preliminary and miscellaneous motions and
requests, the various oppositions, replies thereto and comments7
to various oppositions and replies, filed by the parties. In
addition, the APJ opened preliminary statements and ordered their
service. At the same time, the APJ placed the junior parties
Tucholski and Cataldi et al. under an order pursuant to 37 CFR
1.640(d)(3) to show cause why judgment should not be entered 8
Interference No. 103,036
The accompanying final decisions address the issues raised by9
the party Cataldi et al. and by the party Wang et al.
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against them in view of the fact that the dates alleged in their
preliminary statements did not overcome the filing date of the
senior party Burroughs et al.
The junior parties Tucholski and Cataldi et al. filed
responses to the show cause order. The purpose of this final
hearing is to determine whether the junior parties Tucholski and9
Cataldi et al. have shown sufficient cause to avoid the entry of
judgment against them. This decision addresses the issues raised
by the party Tucholski.
In its memorandum (Paper No. 505) in response to the
show cause order, the party Tucholski urges that a favorable
decision on its preliminary motions for judgment against the
party Burroughs et al. would vitiate the show cause order under
37 CFR § 1.640(d)(3). If the senior party Burroughs et al.'s
claims are held to be unpatentable as urged in the aforesaid
preliminary motions, then the senior party Burroughs et al. would
be removed from the interference. The interference would then
proceed as a three party interference with the party Cataldi
Interference No. 103,036
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Interference No. 103,036
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et al. as the senior party. In that circumstance, the party
Tucholski's preliminary statement would overcome the effective
filing date of the party Cataldi et al.
The memorandum also includes a request for final
hearing to review preliminary motions (Paper Nos. 81 and 82) for
judgment against Burroughs et al. and a motion (Paper No. 506)
for testimony. The APJ granted the request for final hearing to
the extent that this case would be set down for final hearing to
consider such matters as may be pertinent under 37 CFR § 1.655
and granted the motion for testimony to the extent that the party
Tucholski was authorized to introduce into evidence only that
evidence relied upon in its two preliminary motions for judgment
(Paper Nos. 81 and 82) and in its replies (Paper Nos. 257 and
258). The APJ's order states, "[n]o other evidence may be
introduced." See Section IV of Interlocutory Order No. 4, dated
July 19, 1996 (Paper No. 534).
The parties Wang et al., Tucholski, Cataldi et al. and
Burroughs et al. took testimony, filed records and briefs, and
appeared through counsel, at final hearing.
Interference No. 103,036
-8-
ISSUES
The junior party Tucholski's opening brief raises the
following issues:
1. Whether the parties' claims corresponding to the count are
unpatentable over prior art.
2. Whether the senior party Burroughs et al.'s claims
corresponding to the count are unpatentable under 35 U.S.C.
§ 112.
3. Whether the APJ abused his discretion by (i) scheduling two
final hearings, (ii) not permitting the party Tucholski
additional discovery, (iii) permitting the senior party Burroughs
et al. to raise its schedule B motions at the first final
hearing, and (iv) not scheduling a time for the party Tucholski
to file a reply to the other junior parties opposition briefs.
4. Whether the Board should retain the party Tucholski as a
party to this interference regardless of the outcome of the first
final hearing.
In Interlocutory Order No. 10, consideration of the
party Tucholski's miscellaneous motion (Paper No. 665) to excuse
the belatedness of its second preliminary motion (Paper No. 666)
Interference No. 103,036
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for judgment, and its motion (Paper No. 660) to compel was
deferred to final hearing provided that the party Tucholski files
a paper within five days after final hearing requesting
consideration of the motions. Such a paper (Paper No. 794) was
filed. Accordingly, the following motions are also before us:
5. Whether the party Tucholski's miscellaneous motion under
37 CFR §§ 1.635 and 1.645(b) to file a belated motion for
judgment should be granted.
6. Whether the party Tucholski's second preliminary motion under
37 CFR § 1.633(a) for judgment that the parties' claims are
unpatentable should be granted.
7. Whether the party Tucholski's motion to compel should be
granted.
The senior party Burroughs et al.'s opening brief
raises the following issue with respect to the party Tucholski:
8. Whether the party Tucholski's claims corresponding to the
count are unpatentable over prior art.
Interference No. 103,036
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Unpatentability of the Party Burroughs et al.'s Claims
over Prior Art--Issues (1, 5 and 6)
Issue (1)
The party Tucholski's opening brief raises the
following five grounds for unpatentability against the parties'
claims:
A. The parties' claims corresponding exactly to the count, i.e.,
Wang's claim 54, Tucholski's claim 62, Cataldi's patent claim 20
and Burroughs' reissue claim 37, are anticipated by Kiernan, U.S.
Patent No. 4,723,656, by Parker, U.S. Patent No. 4,747,020, or by
the prior art BatCheck® tester (Tucholski's Exhibit Nos. 46A and
47A (TX 46A and 47A)). [See pages 2 to 8 and 85 of the opening
brief.]
B. The parties Wang's claims 43 to 53 and 55 to 63, Cataldi's
patent claims 9 to 19 and 21 to 29, Cataldi's reissue claims 21,
Interference No. 103,036
The party Tucholski does not assert that the party Burroughs10
et al.'s patent claims 1 to 11, and Burroughs et al.'s reissue claims
13 to 15, 30 to 32, and 42 are anticipated by Kiernan, U.S. Patent
No. 4,723,656.
-11-
23 to 25, 28 and 29, Burroughs' reissue claims 16 to 29, 33 to10
36, 38 to 40 and 43 to 51, are anticipated by Kiernan, U.S.
Interference No. 103,036
The party Tucholski does not assert that the party Burroughs11
et al.'s patent claims 1 to 11 or its reissue claims 13 to 15, 17,
19, 21, 25, 27, 30 to 32, 34, 38, 40, 43, 45, 47, and 51 are
anticipated by Parker, U.S. Patent No. 4,747,020, or by the prior art
BatCheck tester.
-12-
Patent No. 4,723,656. [See pages 8 to 18 of the opening brief
and Addendum A to the opening brief.]
C. The parties Wang's claims 43, 45 to 48, 50, 51, 53 to 59, 62
and 63, Cataldi's patent claims 9, 11 to 14, 16, 17, 19 to 23, 28
and 29, Cataldi's reissue claims 9, 11 to 14, 16, 17, 19 to 23
and 28 to 40, Burroughs' reissue claims 16, 18, 20, 22 to 24,11
26, 28, 29, 33, 35 to 37, 39, 41, 42, 44, 46, and 48 to 50 are
anticipated by Parker, U.S. Patent No. 4,747,020, or by the prior
art BatCheck tester.® [Pages 19 to 28 of the opening brief]
D. The party Wang's claims 22 to 24 are anticipated by Sterling,
U.S. Patent No. 1,497,388. [Pages 29 to 34 of the opening brief]
E. All of the parties' claims corresponding to the count are
obvious over Sterling, U.S. Patent No. 1,497,388 in view of
Kiernan, U.S. Patent No. 4,723,656, Parker, U.S. Patent No.
Interference No. 103,036
-13-
4,747,020, or the prior art BatCheck® tester. [See pages 35 to
62 of the opening brief and Addendum B to the opening brief.]
Interference No. 103,036
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Preliminary Matters
I
On page 62 of its opening brief, the party Tucholski
makes a qualified admission that its claims corresponding to the
count are unpatentable over the relied upon prior art. However,
37 CFR § 1.637(a) does not provide for any qualified admission
but rather presumes that the prior art cited in a motion is
applicable to the moving party unless there is included with the
motion an explanation as to why the prior art does not apply to
the moving party. Nowhere does the party Tucholski's brief or
the party Tucholski's underlying preliminary motion for judgment
explain how the party Tucholski's claims corresponding to the
count are patentable over the cited references.
The foregoing lack of explanation as required by 37 CFR
§ 1.637(a) constitutes an admission that the cited references
disclose (35 U.S.C. § 102) or render obvious (35 U.S.C. § 103)
the party Tucholski's claims corresponding to the count. See
Guglielmino v. Winkler, 11 USPQ2d 1389 (Bd. Pat. App. & Int.
Interference No. 103,036
-15-
1989), rev'd on other grounds, slip op. at 17 USPQ2d 1175 (Fed.
Cir. 1990) and Fiddes v. Baird, 30 USPQ2d 1481 (Bd. Pat. App. &
Int. 1993). Whether the cited references constitute "prior" art
is not admitted by the party Tucholski. However, a review of the
party Tucholski's preliminary statement shows that it contains no
date of invention which antedates the dates of these references.
Thus, the references are prior art to the party Tucholski and the
party is not entitled to its claims corresponding to the count
based on the admission.
II
Insofar as the grounds A to E urge that the claims of
the party Wang et al. and the party Cataldi et al. are
unpatentable over prior art, the party Tucholski's opening brief
is dismissed.
In accordance with Interlocutory Order No. 9, pages 12
and 13, the grounds for unpatentability entitled to consideration
are those raised in motions by the junior parties Wang et al.,
Tucholski and Cataldi et al. attacking the right of the senior
Interference No. 103,036
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party Burroughs et al. to remain in this interference and those
raised in motions filed by the senior party Burroughs et al.
attacking the right of the junior parties Tucholski and Cataldi
et al. to remain in this interference.
An APJ's interlocutory order is presumed to have been
correct and the party attacking that order has the burden of
showing an abuse of discretion. 37 CFR § 1.655(a). An abuse of
discretion may be found when (1) the decision is clearly
unreasonable, arbitrary or fanciful, (2) the decision is based on
an erroneous conclusion of law, (3) the findings are clearly
erroneous, or (4) the record contains no evidence upon which the
APJ rationally could have based the decision. Cf. Abrutyn v.
Giovanniello, 15 F.3d, 1048, 1050-51, 29 USPQ2d 1615, 1617 (Fed.
Cir. 1994). Nowhere does the party Tucholski's opening brief
request review of the APJ's Interlocutory Order No. 9 or show
that the APJ's order constitutes an abuse of discretion to the
extent that it limits the issues of unpatentability to be raised
by the party Tucholski at this final hearing.
Interference No. 103,036
Addendum A to the party Tucholski's brief sets forth the12
basis upon which the party Tucholski relies for anticipation.
We note that the Kiernan patent was cited or referenced in13
each party's application involved in this proceeding.
A copy of this motion appears in the Tucholski record at14
pages 565 to 587 (TR 565 to 587).
A copy of the reply appears at TR 840 to 876. The matter of15
anticipation over Kiernan appears at TR 854 to 856.
-17-
III
Insofar as the brief raises the matter of whether the12
parties' claims are anticipated by Kiernan, U.S. Patent No.
4,723,656, by Parker, U.S. Patent No. 4,747,020, or by the13
prior art BatCheck tester (grounds A to C above), the matter is
not entitled to any consideration. The matter is not raised in
the party Tucholski's underlying preliminary motion (Paper No.
81) for judgment, which the party Tucholski seeks review of at14
final hearing. The matter of anticipation by Kiernan is raised
in the reply to the opposing parties' oppositions to the15
motion; the matter of anticipation by the Parker patent and the
prior art BatCheck® tester is raised for the first time in the
opening brief. Pursuant to 37 CFR § 1.655(b), a party cannot
Interference No. 103,036
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present a new argument at final hearing for granting a motion if
the new argument is not included in the original motion, unless
the party shows good cause as to why the argument was not earlier
presented. Bayles v. Elbe, 16 USPQ2d 1389, 1391 (Bd. Pat. App. &
Int. 1990); Payet v. Swidler, 207 USPQ 168, 170 (Bd. Pat. Int.
1980); and Fredkin v. Irasek, 397 F.2d 342, 346, 158 USPQ 280,
284 (CCPA 1968). Accordingly, the brief is dismissed as to this
matter.
Even if this matter were timely raised in the
preliminary motion, the motion would have been denied.
Anticipation requires that all the elements of the claimed
invention be described in a single reference. In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). We agree
with the party Burroughs et al. that the Kiernan and Parker
patents and the prior art BatCheck® tester fail as an
anticipation of the party Burroughs et al.'s claims, because they
do not disclose either a battery strength indicator attached to
Interference No. 103,036
The Sterling patent is cited in the Burroughs et al. patent16
specification and in the Wang et al. application disclosure.
This is the device illustrated in Parker, U.S. Patent No.17
4,737,020. See the testimony of Mr. Alan B. Palmer at pages 750 and
751 of the party Wang et al.'s record (WR 750 and 751). Thus, the
assertion that the party Burroughs et al.'s claims are unpatentable
under 35 U.S.C. § 103 over Sterling in view of the BatCheck® device
would be cumulative to the assertion that the claims are unpatentable
over Sterling in view of Parker.
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the side of a battery housing or any type of switch attached to
the side of the battery housing.
III
Insofar as the brief raises the matter of whether the
parties' claims are unpatentable over Sterling, U.S. Patent No.16
1,497,388 in view of the prior art BatCheck® tester (the third17
alternative rejection raised in ground E), the brief is not
entitled to consideration. This matter is not raised in the
party Tucholski's underlying preliminary motion (Paper No. 81)
for judgment. As we noted above, pursuant to 37 CFR § 1.655(b),
a party cannot present at final hearing a matter which is not
raised in a motion unless the party shows good cause why the
matter was not properly raised by a timely filed preliminary
motion. Bayles v. Elbe, 16 USPQ at 1391; Payet v. Swidler, 207
Interference No. 103,036
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USPQ at 170; and Fredkin v. Irasek, 397 F.2d at 346, 158 USPQ at
284. No such showing was made by the party Tucholski.
Accordingly, the Tucholski brief is dismissed insofar as it
raises the matter of the unpatentability of the party Burroughs
et al.'s claims over Sterling in view of the prior art BatCheck®
tester.
Even if this matter were timely raised in a preliminary
motion, the motion would have been denied for the reasons set
forth in our opinion re: issue (1), infra.
IV
In view of the foregoing, the only issue on
patentability over prior art entitled to consideration is ground
E to the extent indicated above in Section III.
Issue (1)
The brief urges in ground E that the party Burroughs et
al.'s claims corresponding to the count are obvious under
35 U.S.C. § 103 over Sterling, U.S. Patent No. 1,497,388 in view
Interference No. 103,036
The examiner initially rejected the claims originally in18
the Cataldi application, which matured to the involved Cataldi
patent, over the Parker patent and the party Cataldi et al. obtained
the allowance of its claims over this patent. TR 574 and 575. The
Parker patent was also cited, but no rejection was made, in both the
Burroughs et al. reissue application and the Burroughs et al. patent.
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of either Kiernan, U.S. Patent No. 4,723,656, or Parker, U.S.18
Patent No. 4,747,020. As the moving party, the party Tucholski
has the burden of proof by a preponderance of the evidence on the
motion. Kubota v. Shibuya, 999 F.2d 517, 519 n.2, 27 USPQ2d
1418, 1420 n.2 (Fed. Cir. 1993) ("The term 'burden of proof' as
Interference No. 103,036
-22-
used herein, and as we understand it to be used in § 1.633, means
the burden to establish the proposition at issue by a
preponderance of the evidence.") The basis for the proposed
unpatentability is set forth in Addendum B to the brief.
The Sterling patent teaches at page 1, lines 19 to 30,
a simple device for readily giving the user of a dry cell an
approximate indication of the electrical condition of the cell at
any time, comprising a cell having ("attached to or, or sent
along with [line 25]") an indicating means so that the strength
of the cell may be readily tested without the necessity of
hunting up an instrument for the purpose. Sterling teaches two
embodiments. The first embodiment is depicted in Figures 1 and 2
as follows:
Interference No. 103,036
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As shown in Figures 1 and 2, the indicating means
comprises a piece of paper or other carrier (5) having attached
Interference No. 103,036
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thereto a pair of wires (6 and 7), the adjacent ends of which
overlap and do not touch each other, leaving a space (8) between
the wires, into which, an indicator, which will change color when
an electric current is passed therethrough, is impregnated and
dried. The preferred indicator is phenolphthalein. The wires (6
and 7) have clips (9 and 10) attached thereto for engagement with
the binding posts (11 and 12) of the cell (13).
To test the strength of the battery, the user must
attach both clips to the binding posts of the cell and moisten
the indicator region where the phenolphthalein is present. Then,
current will pass through the moistened spot and cause the
indicator to change color. The battery condition is determined
by comparing the color at the moistened section with the colors
on color chart (15) printed on carrier (6).
The second embodiment is depicted in Figures 3 and 4 as
follows:
Interference No. 103,036
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Interference No. 103,036
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In this embodiment, a first piece of L-shaped sheet
metal (23) is tightly fitted in a slot in the carbon electrode
(21) such that its upper end protrudes through pitch seal (22)
and is exposed at the outer surface of that pitch seal. A second
L-shaped piece of sheet metal (24) is attached to the interior of
the zinc can and extends out of the cell through the pitch seal
(22) adjacent to, but out of contact with, the first piece (23).
The exposed edges of the sheet metal pieces (23 and 24) define a
space (25) analogous to the space (8) in the first embodiment.
The carrier for the indicator is shown at 26 and is attached to
the carbon electrode by a fastener (27). The carrier has a color
chart (28) and an interpretative chart (29) printed on its
surface. The part of the carrier that overlies space (25) is
impregnated with an indicator such as phenolphthalein. To test
the cell, the phenolphthalein impregnated spot (26) is moistened
and pressed down onto the exposed edges of elements (23 and 24).
The spot changes color in response to the magnitude of the
battery voltage and a comparable color is selected from chart
(28) and interpreted at chart (29).
Sterling fails as an anticipation of the claimed
invention of the party Burroughs et al. in that Sterling does not
disclose the particular indicating device or the particular
Interference No. 103,036
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switch means of the party Burroughs et al.'s claims. The
secondary references, Kiernan and Parker '020, disclose
indicating devices similar to those claimed by the party
Burroughs et al.
The party Tucholski urges that it would have been
obvious to one of ordinary skill in this art to substitute the
thermochromic tester of Kiernan or Parker '020 for the
electrochromic tester of Sterling, thus rendering the party
Burroughs et al.'s claims obvious. In this regard, the party
Tucholski relies upon the testimony of Dr. Liu, its expert
witness, who testified at TR 154 to 158 that the suggestion for
this substitution is found in the Sterling patent which shows the
combination of a battery and a capacity determining voltage
sensor. In addition, the party Tucholski relies upon the
testimony of Dr. Barnett, the party Wang et al.'s expert, who
testified at WR 882 to 883 that the motivation to combine
Sterling and Kiernan is provided by Sterling's teaching that
indicators other than phenolphthalein may be used.
Opinion re: Issue (1)
The party Tucholski has not sustained its burden to
show that the party Burroughs et al.'s claims are obvious over
Sterling in view of either Kiernan or Parker '020.
Interference No. 103,036
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Sterling contemplates the use of any chemical which can
be impregnated into the space (8) and which will change color
when a current is passed therethrough. Consequently, we agree
with the party Burroughs et al. that there is no motivation or
suggestion in Sterling to utilize any indicating device other
than the chemical type disclosed therein. We also agree with the
party Burroughs et al. that even if it were suggested to combine
Sterling with Kiernan or Parker '020, which it is not, then the
combined references would not disclose any switch means.
The experts (Messrs. Alan Palmer and Barnett testifying
on behalf of the party Wang et al., and Mr. Chung-Chiun Liu
testifying on behalf of the party Tucholski) testified that the
Sterling patent does not disclose or suggest the use of a switch,
i.e., clips 9 and 10 of Figures 1 and 2 do not act as a switch
when attached to the battery posts 11 and 12 and the embodiment
of Figures 3 and 4 is not a typical switch. WR 1468 to 1470,
1480 and 1481; TR 2179 to 2182, 2185, 2186, 2585 to 2586.
Assuming that it would have been obvious or somehow
suggested to add a switch means to the combined references, we
agree with the party Burroughs et al. that the switch means of
independent claims 1, 24 and 44 and those dependent thereon,
means for forming a switch as required by independent claims 16,
Interference No. 103,036
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20, 33, 37, 50 and 51 and those dependent thereon, electrical
switch means as required by independent claims 24 and 44 and
those dependent thereon must be those switches (membrane)
described in the Burroughs et al. specification or equivalents
thereof. See In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d
1845, 1848 (Fed. Cir. 1994), where the Court stated with respect
to 35 U.S.C. § 112, paragraph 6:
The plain and unambiguous meaning of
paragraph six is that one construing means-plus-
function language in a claim must look to the
specification and interpret that language in light of
the corresponding structure, material, or acts
described therein, and equivalents thereof, to the
extent that the specification provides such
disclosure.
However, we do not agree with Burroughs et al. that claims 13 and
30 and those dependent thereon are necessarily limited to the use
of membrane switches, because the claims do not recite electrical
switch means but rather recite "electrical switch."
Further, as to all claims it should be noted that the
Sterling, Kiernan and Parker patents were before the primary
examiner in charge of the examination of the patents and reissue
applications involved in this interference and the examiner found
that the parties' claims designated as corresponding to the count
of this interference are patentable over these patents. Nowhere
Interference No. 103,036
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does the party Tucholski explain why the examiner's actions in
allowing the parties' claims over the references is in error.
Clearly, such a showing should have been made. Cf. Brown v.
Bravet, 25 USPQ2d 1147, 1150 (Bd. Pat. App. & Int 1992).
Accordingly, we hold that the party Tucholski has not
sustained its burden to demonstrate a prima facie case for
obviousness of the involved Burroughs et al. claims. Therefore,
we need not evaluate the secondary considerations (long felt need
and commercial success).
Interference No. 103,036
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Issues (5 and 6)
As we noted above (see Issue 1, Preliminary Matters,
Section I), any issue of patentability of the parties' claims
over prior art will only be considered insofar as it relates to
the claims of the party Burroughs et al. Accordingly, the
miscellaneous and preliminary motions are dismissed insofar as
they urge that the claims of the parties Wang et al. and Cataldi
et al. are unpatentable over prior art.
The miscellaneous motion (Paper No. 665) requests that
the belatedness of the second preliminary motion for judgment be
excused, since the preliminary motion could not have been filed
earlier. It is urged that the evidence in support of the motion
was not available until the cross-examination of Dr. David O.
Feder was taken. During cross, Dr. Feder testified that if the
BatCheck® device were on a piece of paper, then the BatCheck®
would be "a label with an integral battery tester." The motion
states that at that time, counsel for the party Tucholski evinced
that the commercially available BatCheck® device (TX 1 and
Tucholski's Cross Exhibit 47A (TCX 47A)) "meets all the
limitations of the count" and recognized at that time that the
BatCheck® device anticipated many of the claims corresponding to
the count. The miscellaneous motion is denied.
Interference No. 103,036
-32-
We agree with the party Burroughs et al.'s opposition
that the party Tucholski had sufficient evidence available to it
several months prior to the time of cross-examination which
showed that the BatCheck® was a label with an integral battery
tester. See the declarations submitted by the party Tucholski
under 37 CFR § 1.672(b). Whether or not an admission was made by
Dr. Feder is of no legal consequence against the party Burroughs
et al., since Dr. Feder was a witness for the party Cataldi et
al. An admission, if made, by Dr. Feder would be binding upon
the party Cataldi et al. and not on the party Burroughs et al.
See Fed. R. Evid. 801(d)(2).
Even if the motion were considered to have been timely
filed, the motion would have been denied. As we noted above, the
BatCheck® device is identical to the device disclosed in Parker
'020. The motion urges that the BatCheck® device anticipates
Burroughs et al.'s label claims 16, 18, 20, 22 to 24, 26, 28, 29,
33, 35 to 37, 39, 41, 42, 44, 46 and 48 to 50. Anticipation
requires that all the elements of the claimed invention be
described in a single reference. In re Spada, 911 F.2d at 708,
15 USPQ at 1657. Since the BatCheck® device, which is equivalent
to the Parker '020, does not contain a switch, it cannot
anticipate the foregoing claims. Nor would the BatCheck® in
Interference No. 103,036
-33-
combination with Kiernan and Sterling render prima facie obvious
the Burroughs et al. claims 1 to 11, 13 to 16, 28 to 20, 22 to
37, 39 to 57 because the combined references fail to disclose or
suggest the use of any switch or the particular switch means
utilized by the party Burroughs et al.
Unpatentability of the Party Burroughs et al.'s
Claims under 35 U.S.C. § 112--Issue (2)
The party Tucholski's brief urges that the senior party
Burroughs et al.'s claims corresponding to the count are
unpatentable under 35 U.S.C. § 112, first paragraph, for failure
of the Burroughs et al. specification to contain a written
description for the thermal insulation limitation of the claims.
Pages 97 and 98 of the opening brief break the claims
into the following categories.
A. Claims 33, 35 to 37, 39, 40 and 43 to 49 recite
sufficient thermal insulation means under one of its
surfaces to overcome heat sinking when the voltmeter
is in contact with a battery having an electrically
conducting housing
B. Claims 13 to 15 recite
a portion of a sealed chamber, cell or bubble below
one of its [the conductive layer's] surfaces
C. Claims 16 to 23 recite
sufficient non-conducting means under one of its [the
conductive layer's] surfaces to permit the heat
Interference No. 103,036
-34-
generated by the conductive layer to change the color
of the temperature sensitive color indicator material
and indicate voltage when the voltage indicator is in
contact with a battery housing
D. Claims 24 to 29 recite
means between the conductive layer and the battery
housing to permit the heat generated by the
conductive layer to change the color of the
temperature sensitive color indicator material when
the voltage indicator is in contact with a battery
housing
E. Claims 30 to 32, 41 and 42 recite
an air pocket under one of its [the conductive
layer's] surfaces
F. Claim 50 recites
coupling means to permit the heat generated by the
conductive layer to change the color of the
temperature sensitive color indicator material when
the voltage indicator is in contact with a battery
housing
Interference No. 103,036
-35-
G. Claim 51 recites
means to transfer sufficient heat generated by the
conductive layer to the temperature sensitive color
indicator material...when the voltage indicator is in
contact with a battery housing.
The party Tucholski's position
It is the party Tucholski's position that the Burroughs
et al. specification as originally filed does not reasonably
convey to the artisan that Burroughs et al. recognized the “heat
sinking” problem which occurs when a voltage indicator is in
contact with a battery having an electrically conducting housing,
and that the specification does not have express support for, or
inherently disclose, "thermal insulating means" or equivalents
thereof. While the Burroughs et al. specification discloses the
use of nonconductive materials, it is the party Tucholski's
position that the specification meant that these materials are
electrically nonconductive and not thermally nonconductive. The
party Tucholski argues that there is no recognition in the
Burroughs et al. specification of thermally nonconductive
materials or that such materials would solve the heat sinking
problem, and that the specification contains no examples of
thermal insulators.
The Burroughs et al. specification
Interference No. 103,036
-36-
The Burroughs et al. specification, column 4, lines 21
to lines 38, discloses the following embodiment:
In another embodiment of the present
invention, the battery-strength indicator means
comprises:
(a) a first nonconductive layer;
(b) a second nonconductive layer attached
to the first nonconductive layer, a portion of said
first and second nonconductive layers forming a
chamber therebetween;
(c) a conductive layer sandwiched between
said first and second nonconductive layers, the
conductive layer reduced to a small cross-sectional
area in the chamber; and
(d) a heat sensitive color-indicating
material in said sealed chamber that is adapted to
undergo a color change when its temperture [sic]
exceeds or crosses a predetermined value, said
conductive layer in the chamber rising to a
predetermined temperture [sic] when the voltage of
the current flowing therethrough exceeds a
predetermined value.
Figure 10 of the Burroughs et al. patent is as follows:
Interference No. 103,036
-37-
Concerning Figure 10, the Burroughs et al.
specification, column 8, line 26 to column 9, line 3, reads as
follows:
Another embodiment of the battery-strength
indicator device of the present invention is shown in
FIG. 10. The indicator device 10D is a strip like
device having first and second superimposed layers 30
and 32 which are attached together in the same manner
as strips 30 and 32 in FIG. 3. At least one of the
strips is transparent. Conductive layers 64 are
sandwiched between the first and second layers. The
conductive layer is reduced to a small cross-section
65 in the indicator zone 66. Within the indicator
zone, the conductive layer is covered with a small
amount of a pyrotechnic chemical 68 sensitive to
heat. Surrounding the pyrotechnic chemical is a
color indicating, heat-sensitive material 70 which
will undergo a visible color change, either permanent
or temporary, when the material is heated to at least
a predetermined temperature. This battery-strength
indicator device is a one-shot device; the
pyrotechnic chemical will only decompose or react
once. The pyrotechnic chemical undergoes rapid
decomposition when it is heated to a predetermined
temperature. The resistance of the conductive layer
in the reduced cross-sectional area 5 is selected
such that current flow at a minimum predetermined
voltage through the conductive layer will raise the
area to a predetermined temperature which will cause
the pyrotechnic chemically to decompose or otherwise
react. The pyrotechnic chemical in turn will raise
the temperature of the color-indicating, heat
sensitive material to the predetermined temperature
for color change. [Emphasis added.]
Interference No. 103,036
-38-
Although the indicator device of FIG. 10D
is shown with a color-indicating, heat-sensitive
Interference No. 103,036
-39-
material, the device can also be fabricated with the
pyrotechnic chemical alone, thereby causing a slight
charring to the strip which is noticeable. One of
the strips can also be made of a material that is
sensitive to temperature and will undergo a visible
change when the temperature exceeds a predetermined
value. Alteratively, the device can be fabricated
without the pyrotechnic chemical, relying on the
color-indicating, heat-sensitive material alone to
indicate whether the battery has a predetermined
minimal voltage output. If the color indicating,
heat-sensitive material undergoes a non-permanent
color change when exposed to a predetermined
temperature, then the battery-strength indicator
device of FIG. 10D can be used repeatedly to
determine if the output voltage of the battery meets
a predetermined voltage level. [Emphasis added.]
The Party Burroughs et al.’s Position
The party Burroughs et al. urges that its specification
contains a sufficient written description for the limitation in
question, "thermal insulating," and equivalents thereof and
relies upon the testimony of Dr. Powers, an expert witness for
the party Burroughs et al. Dr. Powers testified as follows at
BR 32 to 39:
16. I have reviewed in particular the embodi-
ment of the battery strength indicator shown in Fig.
10 of the Burroughs '544 patent and described in the
specification in column 4, lines 21-38 and column 8,
line 26 through column 9, line 3. As described
therein, first and second nonconductive strips or
Interference No. 103,036
-40-
layers 30 and 32 are applied to the side of the
battery housing as in Fig. 2. Sandwiched between the
Interference No. 103,036
-41-
nonconductive layers is a conductive layer 64 which
has a reduced cross sectional area 65 in a sealed
chamber or indicator zone 66. In contact with the
conductive layer is either a color indicating heat
sensitive material 70, a pyrotechnic chemical 68, or
the color indicating heat sensitive material in
combination with the pyrotechnic chemical. When this
embodiment of the battery strength indicator is
electrically connected across the terminals of the
battery, current flows through the conductive layer
64. Because the conductive layer is reduced to a
small cross section 65 in the indicator zone 66, the
resistance of which is selected such that current
flow at a minimum predetermined voltage will raise
the area 65 to a predetermined temperature, the heat
generated by the conductive layer raises the temper-
ature of the color indicating heat sensitive material
to a predetermined temperature for color change to
indicate the voltage or strength of the battery.
17. The insulative or nonconductive layers
described in the Burroughs '544 patent are present to
shield components of the strength indicator which
transmit heat and/or electricity, and are indicated
as doing so. For example, in the indicator device
10D shown in Fig. 10, nonconductive layers 30 and 32
(attached to the side of the battery housing)
surround the "color indicating, heat sensitive
material 70 which undergoes a visible color change
when the material is heated to at least a
predetermined temperature" (column 8, lines 37-41).
In order for this embodiment to be operable when
applied to the side of a dry cell battery, the
construction of the battery strength indicator,
including the nonconductive layers, must be such to
permit sufficient heat generated by the reduced cross
section conductive area 65 to flow to the color
indicator material to cause a color change. Heat
generated by the reduced section conductive area 65
is within the sealed chamber or zone 66 adjacent to
Interference No. 103,036
-42-
nonconductive layers 30 and 32, and will naturally
desire to flow in all directions from reduced cross
sectional conductive area 65, unless somehow
constrained. In this instance, the clear function of
nonconductive layers 30 and 32 is with regard to heat
flow to ensure that the heat generated by the reduced
conductive layer 65 is able to raise the temperature
of the color indicating, heat sensitive material 70.
The only way this can be accomplished is if layers 30
and 32 are thermally nonconductive. It would be
illogical for anyone of ordinary skill in this art to
understand that "nonconductive' layers 30 and 32 are
somehow thermally conductive, since this would cause
heat to flow away from color indicating, heat
sensitive material 70 and would not permit material
70 to receive heat to undergo a visible color change
to indicate the remaining strength of the battery, as
is described. Likewise, in order for the current to
be able to flow through conductive layer 64,
"nonconductive” layers 30 and 32 must also be
electrically nonconductive, or else the device would
short circuit.
18. Additionally, the portion of the chamber,
cell or bubble below the conductive layer and the air
pocket (see Sections I.A. and I.F.) are inherently
thermal insulative and independently provide adequate
support to provide adequate support for the thermal
insulation limitation. As such, it is the natural
result of such construction that the nonconductive
layer (30 or 32) adjacent to the battery housing,
along with any portion of the sealed chamber or zone
66 beneath the conductive area 65, has both
sufficient electrical insulation to prevent short
circuiting and sufficient thermal insulation to
overcome heat sinking when the battery strength
indicator is in contact with the battery housing.
The reference to repeated use of this embodiment of
the battery strength indicator at column 9, lined 1-3
also requires that heat sinking to the battery
Interference No. 103,036
-43-
housing be overcome by the thermal insulation beneath
the conductive area 65 of layer 64.
19. In connection with the battery housing, dry
cell batteries of the type shown in Fig. 2 of
Burroughs et al. patent and described elsewhere as
nonrechargeable alkaline batteries (column 11, line
42) or zinc-carbon batteries (column 12, line 63) all
have electrically conductive housings. In a case of
alkaline dry cells, the side of the housing is part
of the cathode. In the case of zinc-carbon
batteries, the side of the housing is part of the
anode. Thus, I believe that the Burroughs '544
patent inherently discloses that the dry cell battery
housing is electrically conductive.
20. Fig. P- 1 below is a side elevational view
of a thermal and electrical model of the heat
sensitive battery strength indicator embodiment shown
Interference No. 103,036
-44-
Interference No. 103,036
-45-
in Fig. 10 of the '544 patent. While Fig. P-1 does not
appear in the ‘544 patent as such, it is based entirely
on the disclosure of the Burroughs ‘544 patent, and is
intended to show the relative positions of the various
components and the actual flow of heat and current as
described in the patent.
The relative positions of the features of Fig.
P-1 are supported by the '544 patent specification as
follows, with the feature numbers shown bold in
brackets corresponding to those shown in Fig. 10.
Specifically, at column 4, lines 21-38, the
specification states:
the battery strength indicator means
comprises: (a) a first nonconductive layer
[30]; (b) a second nonconductive layer [32]
attached to the first nonconductive layer, a
portion of the first and second nonconductive
layers forming a chamber [66] therebetween;
(c) a conductive layer [64] sandwiched
between said first and second nonconductive
layers, the conductive layer reduced to a
small cross-sectional area [65] in the
chamber; and (d) a heat sensitive color
indicating material [70] in said sealed
chamber that is adapted to undergo a color
change when its temperature exceeds or
crosses a predetermined value, said
conductive layer in the chamber rising to a
predetermined temperature when the voltage of
the current flowing therethrough exceeds a
predetermined value.
The battery strength indicator is attached to the
side of a dry cell battery [18] in accordance with
Fig. 2 and the disclosure at column 6, lines 15-
29. The housings of both the nonrechargeable
alkaline and zinc-carbon dry cell batteries
disclosed in the '544 patent at column 11, line 42
Interference No. 103,036
-46-
and column 12, line 63 are electrically
conductive. The heat sensitive color
indicating material [70] is above the
conductive layer reduced area in the sealed
chamber in accordance with the top plan view
shown in Fig. 10. Pyrotechnic chemical 68 is
not shown in accordance with the alternate
embodiment disclosed at column 8, lines 62-
66. The current and heat flow as shown in
Fig. P-1 above are disclosed at column 8,
lines 45-54 and 62-66.
21. In my opinion, the current and heat flow
model shown in Fig. P-1 is the necessary and only
reasonable construction which one of ordinary skill in
the battery art would give to this embodiment of the
strength or voltage indicator disclosed in the
Burroughs '544 patent. As I believe would be
recognized by one of ordinary skill in the battery art,
nonconductive layers 30 and 32 would be inherently
recognized as having both sufficient thermal
nonconductivity and sufficient electrical
nonconductivity to permit the heat and current flow to
make the device operable, since the absence of either
would make the device inoperable. Further, in my
opinion, the natural result flowing from this
embodiment of the strength or voltage indicator
disclosed in the Burroughs '544 patent, which one of
ordinary skill in the battery art would recognize, is
that the conductive layer has sufficient thermal
insulating means under its surface to overcome heat
sinking when the device is in contact with an
electrically conductive portion of the battery housing.
22. Consistent with the above, nowhere in the
Burroughs '544 patent is the term "nonconductive layer"
specifically limited to electrically nonconductive
materials, nor is it disclosed as being thermally
conductive. It is my opinion that a person of ordinary
Interference No. 103,036
-47-
skill in the art pertaining to battery design and
construction, when reading the Burroughs '544 patent,
Interference No. 103,036
-48-
would understand that, at least in connection with the
embodiment of the battery strength indicator depicted
in Fig. 10, the term “nonconductive layer” refers to
both thermally and electrically nonconductive. This
would be inherently understood because of the fact that
both controlled heat flow and controlled current flow
are discussed. For the strength indicator to operate
as described, one would require thermal insulation in
order for the heat from the reduced section area 65 to
flow to the heat sensitive material 70, as well as
electrical insulation in order to prevent the current
flowing through conductive layer 64 and reduced section
65 to short circuit against the battery housing.
23. In some specific instances described in the
Burroughs '544 patent, the nonconductive layers are
described with regard to their electrically
nonconductive function. For example, in the indicator
device 10F shown in Fig. 15, nonconductive layer 30 is
described as having a "high dielectric constant" so as
to be able to control the electric field generated
across cell 12 by electrodes 62a and 62b. In my
opinion, this does not contradict the inherent and
explicit disclosure of the capabilities of the
nonconductive layers 30 and 32 in controlling heat flow
in connection with the Fig. 10 embodiment, but merely
makes reference to their concurrent dielectric
properties in the Fig. 15 embodiment.
24. My opinion is supported by the various
dictionaries that I have consulted, including the
Dictionary of Physics, which define the term
“conductor” or “conductive” as including both thermal
conductivity and electrical conductivity. As such, the
opposite term "nonconductive” would necessarily
encompass both thermal insulation and electrical
insulation properties, unless specifically limited to
one or the other. My opinion of the nature and
understanding of the term “nonconductive” in connection
with layers 30 and 32 is supported by my experience
Interference No. 103,036
-49-
that the vast majority of nonconductive materials
display both thermal and electrical insulating
properties. It is my opinion that a person having
ordinary skill in the art relating to battery design
and construction would necessarily select a
nonconductive material which would have both thermal
insulating and electrical insulating properties,
without undue experimentation. I am aware of one
exception, diamond, which is a good electrical
nonconductor while also being a good thermal conductor.
I believe that it would be illogical, if not absurd,
that anyone of ordinary skill in the art reading the
'544 patent would somehow understand that the
nonconductive layers, attached to a disposable battery,
would be constructed of diamond, so as to be thermally
conductive and electrically insulative.
The party Burroughs et al. also relies upon the
following testimony of Dr. Powers with respect to attaching a
heat sensitive or voltage indicator to a battery. Dr. Powers
testified at BR 63 to 64 as follows:
75. To determine whether one of ordinary skill
in the art could make and use a heat sensitive
strength or voltage indicator based on the disclosure
of the Burroughs '544 patent, I attached a
commercially available heat sensitive strip type
tester of the type disclosed in the aforementioned
Parker, U.S. Patent No. 4,737,020 and Kiernan et al.,
U.S. Patent No., 723,656 to the types of batteries
described in the '544 patent (column 12, lines
18-22). Specifically, I obtained a D size Eveready
zinc-carbon dry cell battery having the conventional
label on the side over the electrically conductive
metal housing and affixed to it a Battery Checker
Interference No. 103,036
-50-
X-2001 strip tester made by Toshiba Battery Co.,
shown as Exhibit C. The Toshiba strip tester has a
Interference No. 103,036
-51-
conductive layer with a reduced cross-sectional area
to generate heat and, over it, a heat sensitive,
color indicating material which changes color when it
reaches a predetermined temperature due to heat flow
from the conductive layer reduced cross-sectional
area. Below the conductive layer there appears to be
a thin nonconductive layer of ink or paint of less
than 0.5 mil thickness. The strip tester was
attached to the side of the Eveready battery by tape
applied at the edges, with no gap apparent between
the side of the battery and the strip tester. I then
electrically connected the ends of the strip tester
across the terminals of the battery and observed that
heat generated by the conductive layer reduced cross-
sectional area caused the heat sensitive color
indicating material to change color to indicate the
strength of the battery. The device was operable as
attached to the side of the battery without any
special precautions taken to provide thermal
insulation or otherwise prevent heat sinking to the
battery housing.
76. I repeated the experiment by substituting
Energizer alkaline and Duracell alkaline dry cells
forthe Eveready battery as described above. I
received similar results, indicating operability
ofthe device without any special precautions taken to
provide thermal insulation or otherwise prevent heat
sinking to the battery housing.
77. Accordingly, I believe that one of ordinary
skill in the battery art would be able to make and
use the invention described by the Burroughs reissue
claims. I further believe that the invention is
adequately disclosed and supported in the Burroughs
'544 patent and conveys with reasonable clarity to
one skilled in this art that Burroughs et al. were in
possession of the heat sensitive indicator embodiment
described therein.
Interference No. 103,036
-52-
In addition, the party Burroughs et al. relies upon the
following testimony by witnesses associated with the opposing
parties.
Dr. Alan Salkind, one of Cataldi’s witnesses called by
the party Wang et al., testified that he presumed that the
nonconductive layer is both thermally nonconductive as well as
electrically nonconductive. BR 2903. Dr. Feder, an expert
testifying on behalf of the party Cataldi et al., testified with
respect to Burroughs et al. Exhibit 5 (BX 5), which is directly
analogous to the thermal battery strength indicator described in
the Burroughs et al. patent, that nonconductive would normally
mean either electrically or thermally nonconductive. BR 3938 to
3939.
Mr. Patrick D. Hein, a witness for the party Caltaldi
et al., testified on the operativeness of the Burroughs
et al. specification. Mr. Hein testified that he tested
materials and found that group III materials (ten thin synthetic
polymeric films having thicknesses ranging from 0.001 to 0.005
Interference No. 103,036
-53-
inches) had severe heat sinking problems. CR 1077, 1078, 1080
and 1081.
With respect to the heat sinking problem in the context
of this interference, Mr. Hein testified at CR 1143 that
heatsinking creates difficulties, i.e., it decreases the observed
temperature profile on the battery tester/voltmeter when it is in
proximity to a battery container, thus displaying inaccurate or
incorrect readings when the tester mechanism is activated.
Mr. Hein explained at CR 1194:
In the case of a fresh cell with the temperature
profiles that we exhibited, for an example, it
[the fresh cell] might show that it had only three
quarters of available power, when, in effect, it
was the fresh cell that had 100 percent available
power.
However, Mr. Hein acknowledged at CR 1195 that one could get an
accurate good/bad type reading if the tester mechanism was
properly designed. He also testified at CR 1195 and 1196:
Q. Now, within the context of the type of tester
that was applied in the batteries in your
declaration where there is a scale, could one
compensate by condensing the scale of the sensor
to compensate for some heatsinking effects?
A. I don't understand what you mean by
compensating the scale or condensing the scale.
Can you clarify that?
Interference No. 103,036
-54-
Q. If one were to reduce the scale of the sensor
so that it was measuring less of a difference from
the lowest level to the highest level, could such
Interference No. 103,036
-55-
a reduced scale of sensor compensate for the
heatsinking effects that you talk about with
regard to the second group of materials?
A. If I understand the intent of your question,
you're looking at condensing the scale to make it
more like a -- just an on/off, good/bad, one or
the other?
Q. It's going in that direction, yes.
A. The device could be designed that way if you
so desired it to work that way. I don't think
that there's a practical use if the scale would be
condensed, but that's my opinion.
Q. What are other variables that would affect the
reading on the thermal indicator that your [sic]
tested? For example, would the electrical
resistance of the heating element have an effect?
A. The electrical resistance of the heating
element, the design of the taper of the element
itself creating the -- controlling the current
flow through the resistive -- or the conductive
element of the tester, that will have an effect.
The color changing point of the
thermochromic material will have an effect on the
overall design of the tester mechanism. Those are
the two biggest factors in regards to the tester
mechanism itself.
Q. Will the thickness of the insulation also have
an effect?
A. Yes.
Interference No. 103,036
-56-
Opinion re: Issue (2)
Preliminarily, we agree with the party Burroughs et al.
that the party Tucholski's opening brief improperly raises the
matters of lack of written description with respect to the
category B and E to G claims. These matters are not raised in
the party Tucholski's underlying preliminary motion (Paper No.
82) for judgment. As we noted above, pursuant to 37 CFR
§ 1.655(b), a party cannot present at final hearing a matter
which is not raised in a motion unless the party shows good cause
as to why the matter was not properly raised by a timely filed
preliminary motion. Bayles v. Elbe, 16 USPQ at 1391; Payet v.
Swidler, 207 USPQ at 170; and Fredkin v. Irasek, 397 F.2d at 346,
158 USPQ at 284. No such showing was made by the party.
Accordingly, the Tucholski brief is dismissed insofar as it
raises the matters of lack of written description with respect to
the category B and E to G claims.
The Burroughs et al. specification does not describe in
ipsis verbis the presence of thermal insulation as required by
claims 16 to 29, 33, 35 to 37, 39, 40 and 43 to 49. This,
however, is not necessary in order to comply with the description
Interference No. 103,036
It is urged by the party Burroughs et al. that with respect19
to its category C and D claims the means recitation is broad and that
it is not necessary to make any finding that thermal nonconductivity
is required by these claims.
-57-
requirement of 35 U.S.C. § 112, first paragraph, In re Lukach,
442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971); all that is
required is that the application reasonably convey to persons
skilled in the art that, as of the filing date thereof, the
inventor had possession of the subject matter later claimed by
him. In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467
(CCPA 1978) and In re Driscoll, 562 F.2d 1245, 1248-49, 195 USPQ
434, 437 (CCPA 1977). Each question of compliance with § 112,
first paragraph, must be decided on its own facts. In re
Driscoll, 562 F.2d at 1250, 195 USPQ at 438 and Prutton v.
Fuller, 230 F.2d 459, 109 USPQ 59 (CCPA 1956).
We agree with the party Burroughs et al. that the
Burroughs et al. specification contains a sufficient written
description within the meaning of 35 U.S.C. § 112, first
paragraph, for the category A, C, and D claims , which are19
directed to the presence of thermal insulation.
Interference No. 103,036
-58-
As explained by the party Burroughs et al. on page 138
of its opposition brief (Paper No. 737) to the Tucholski brief,
The Burroughs '544 patent specifically
discusses both current flow and heat flow in
connection with the proper operation of the
embodiment, Figure 10. Current flows through the
conductive layer 64 which, at its reduced cross
sectional area portion 65, generates heat which is
then transferred to the temperature sensitive
color indicating material 70. The proper flow of
current and heat requires that it be channeled,
that is, contained by some structure. Such
structure is provided by nonconductive layers 30
and 32, which must inherently be electrically and
thermally nonconductive. That nonconductive
layers 30 and 32 have a dual function, to be both
thermally and electrically nonconductive, is
something that a person having ordinary skill in
the art would recognize. Otherwise, the device
would be inoperative.
We agree with the party Burroughs et al.'s position on page 140
of its opposition brief that:
The insulative or nonconductive layers
described in the Burroughs' 544 patent are present to
shield components of the strength indicator which
transmit heat and/or electricity and are indicated as
doing so. For example, in the indicator device 10D
shown in Fig. 10, nonconductive layers 30 and 32
(attached to the side of the battery housing)
surround the "color indicating, heat sensitive
material 70 which undergoes a visible color change
when the material is heated to at least a pre-
determined temperature" (column 8, lines 37-41).
Interference No. 103,036
-59-
In order for this embodiment to be operable
when applied to the side of the dry cell battery
disclosed in the specification and drawings, the
construction of the battery strength indicator,
including the nonconductive layers, must be such to
permit sufficient heat generated by the reduced
section conductive area 65 to flow to the color
indicator material to cause a color change. Heat
generated by the reduced section conductive area 65
is within the sealed chamber or zone 66 adjacent to
nonconductive layers 30 and 32, and will naturally
desire to flow in all directions from reduced cross
sectional conductive area 65, unless somehow
constrained. In this instance, the clear function of
nonconductive layers 30 and 32 is with regard to heat
flow to ensure that the heat generated by the reduced
conductive layer 65 is able to raise the temperature
of the color indicating, heat sensitive material 70.
The only way this can be accomplished is if layers 30
and 32 are thermally nonconductive. [Emphasis in the
original.]
Note that Alan Salkind, one of the party Cataldi's witnesses
called by the party Wang et al., testified that he presumed that
the nonconductive layer is both thermally nonconductive as well
as electrically nonconductive. BR 2903. Dr. Feder, an expert
testifying on behalf of the party Cataldi et al., testified with
respect to BX 5, which is directly analogous to the thermal
battery strength indicator described in the Burroughs patent,
that nonconductive would normally mean either electrically or
thermally nonconductive BR 3938 to 3939.
Interference No. 103,036
-60-
In our view, the battery strength indicator disclosed
and claimed in the Burroughs et al. patent is presumed to be
operative. In re Jacobs, 318 F.2d 743, 745-46, 137 USPQ 888, 889
(CCPA 1963) and Field v. Knowles, 183 F.2d 593, 600-601, 86 USPQ
373, 378-379 (CCPA 1950). Therefore, we agree with the party
Burroughs et al. that since its patent discloses and claims the
particular embodiment of the temperature sensitive voltage
indicator over a nonconductive layer attached to the side of a
battery, this embodiment must be presumed to be operative, i.e.,
at least the lower nonconductive layer must inherently have
sufficient thermal insulating means under one of [the conductive
layer's] surfaces to overcome heat sinking when the voltmeter is
in contact with a battery having an electrically conducting
housing. Furthermore, the Burroughs et al. specification is
sufficient to show that the natural result flowing from the
operation of the device of Figure 10 is to permit the heat
generated by the conductive layer to change the color of the
temperature sensitive color indicator material. See Hansgirg v.
Kemmer, 102 F.2d 212, 40 USPQ 665 (CCPA 1939) and In re Reynolds,
443 F.2d 384, 389, 170 USPQ 94, 98 (CCPA 1971). In In re
Interference No. 103,036
-61-
Reynolds, 443 F.2d 384, 389, 170 USPQ 94, 98, the court resolved
an issue of inherent disclosure in an analogous case ("means for
preventing an abrupt change in the capacitance . . .") in favor
of an applicant by the disclosure of the drawing and the
knowledge that "a person skilled in the art would suspect that
there was some reason for the relationships shown in the drawing
and would not regard such disclosure as accidental or arbitrary."
The Reynolds court also quoted with approval from Technicon
Instruments Corp. v. Coleman Instruments, Inc., 255 F.Supp. 630,
150 USPQ 227 (N.D. Ill. 1966), aff'd 385 F.2d 391, 155 USPQ 369
(7th Cir. 1967):
By disclosing in a patent application a device
that inherently performs a function, operates
according to a theory, or has an advantage, a patent
applicant necessarily discloses that function, theory
or advantage even though he says nothing concerning
it.
In In re Smythe, 480 F.2d 1376, 1384-85, 178 USPQ 279, 285-86
(CCPA 1973), the court stated that the forgoing principle applies
to the description requirement under 35 U.S.C. § 112.
It is also urged by the party Tucholski that even if
the nonconductive layer disclosed by Burroughs et al.
specification is a polymer layer, it would not be sufficiently
Interference No. 103,036
-62-
thermally nonconductive to obviate the problem of heat sinking.
However, we note that Dr. Powers performed an experiment to
determine the operability of a heat sensitive battery strength or
voltage indicator on the side of a battery without special
precautions taken to prevent heat sinking from the conductive
layer to the conductive battery housing, using a strip tester as
described in the Parker '020 patent and Kiernan Patent. BR 63
and 64. The experiment run by Dr. Powers on behalf of the party
Burroughs et al. demonstrates that heat sinking is not a problem.
As explained by the Court in Field v. Knowles, 183 F.2d at 600,
86 USPQ at 378-79,
The disclosure of an application placed
in interference by the Patent Office is presumed to
be an operative disclosure, . . . and will not be
held to be inoperative unless it is established (by
the junior party by a preponderance of the
evidence, . . .) that it can not be made to operate
for any practical or useful purpose, . . . by such
changes and alterations, short of invention, which
one skilled in the art would be capable of applying
in constructing the device with the disclosure of the
specification and the drawings of the application as
his guide. [Citations omitted.]
For the foregoing reasons, we hold that the party
Tucholski has failed to sustain its burden to show that the
Interference No. 103,036
Prior to the adoption of the new rules, 37 CFR § 1.601 et20
seq., if a party to the interference did not have the "right to make"
its claim, i.e., if the party's involved application did not contain
a written description under 35 U.S.C. § 112, first paragraph, for its
claim corresponding to a count, the interference would be dissolved
as to that count and the party would not be heard on the question of
priority. See Fildes v. Williamson, 92 F.2d 914, 916, 35 USPQ 457,
459 (CCPA 1937).
-63-
Burroughs et al. specification does not have an adequate written
description for its claims 13 to 29, 33 to 40 and 43 to 51.
Abuse of Discretion--Issue (3)
Issue 3(i)
With respect to Issue 3(i), the party Tucholski urges
that the APJ should have allowed each party to present its
evidence (a) supporting all its preliminary motions, oppositions
and replies and (b) relating to priority at one final hearing and
that it is an abuse of discretion for the APJ to schedule two
final hearings, citing Espenschied v. Sykes v. Wier, 1929 Dec.
Comm’r Pats. 26 (1927) and Hewitt v. Weintraub v. Hewitt and
Rogers, 1907 Dec. Comm’r Pats. 155 (1907). These decisions hold
that in a multi-party interference, one final hearing should be
set to hear issues of "right to make" and priority of invention20
rather than bifurcating the interference to hear the right to
Interference No. 103,036
-64-
make question at one hearing and priority of invention at a later
hearing.
Opinion re: Issue 3(i)
The party Tucholski's position is not well taken.
While the Espenschied and Hewitt decisions are relevant to
interference practice over a half century ago, the practice has
changed substantially; more issues can be reviewed at final
hearing. The statute, 35 U.S.C. § 135(a), authorizes the Board
to consider issues of priority of inventions and patentability,
whereas prior to the 1985 amendment of the statute, the Board
only considered priority of inventions and matters ancillary
thereto.
During the motions period in this interference, the
parties filed 91 preliminary and miscellaneous motions and
requests together with associated oppositions, replies and
comments. The rules in effect at the time that the Espenschied
and Hewitt decisions were rendered did not contemplate the filing
of such a vast array of motions.
Pursuant to 37 CFR §§ 1.601 and 1.610(e), an APJ in
charge of an interference is authorized to determine a proper
Interference No. 103,036
-65-
course of conduct in the interference for any situation not
specifically covered by this subpart (37 CFR § 1.601 et seq.) in
order to secure the just, speedy, and inexpensive determination
of the interference. The rules, 37 CFR § 1.601 et seq., are not
designed for a multi-party interference. The bifurcation of this
proceeding into two phases, the first final hearing to hear
questions of patentability and the second final hearing to hear
questions of priority of invention, will secure the just, speedy,
and inexpensive determination of this interference. Contrary to
the arguments of the party Tucholski, the APJ did not abuse his
discretion by setting separate final hearings. See the footnote
in the Commissioner's Notice of December 8, 1986, 1074 Off.
Gaz. 4, which reads as follows:
It should be recognized that the decision of the
Board following the final hearing may not terminate
the interference. For example, if the order to show
cause resulted from an Examiner-in-Chief's [APJ's]
grant of a motion for judgment, and the Board after
final hearing reversed the Examiner-in-Chief's
[APJ's] decision, the case might then proceed to the
taking of priority testimony. The Board's decision
would however be final with regard to the basis of
the motion for judgment.
Interference No. 103,036
-66-
Clearly, the Commissioner contemplated that a bifurcated
proceeding, one to decide patentability and the other to decide
priority of invention, might result.
For the foregoing reasons, we hold that the party
Tucholski has not sustained its burden to show an abuse of
discretion.
Issue 3(ii)
With respect to issue 3(ii), the party Tucholski urges
that the APJ abused his discretion by not granting Tucholski's
request for additional discovery. The party Tucholski requested
additional discovery from the party Wang et al. concerning "at
least two consumer surveys" by Duracell Inc.
On pages 7 and 8 of Interlocutory Order No. 9, dated
October 29, 1996 (Paper No. 632), the APJ denied the party
Tucholski's motion stating, in part, as follows:
The matter concerning which the party Tucholski
seeks additional discovery came to the party
Tucholski's attention at least by May 10, 1996 (the
date preliminary statements were opened and the Wang
affidavit showing under 37 CFR 1.608(b) became
available to the party Tucholski). The motion at bar
was not promptly filed after the availability of the
affidavit showing but rather filed on September 11,
1996, approximately four months later. Clearly under
Interference No. 103,036
-67-
these circumstances, the motion was not seasonably
filed after the party Tucholski became, or should
have become, aware of the alleged ground of
unpatentability.
When the party Tucholski became aware of the
potential 35 U.S.C. § 102(b) bar, it was incumbent
upon the party to seasonably file a belated
preliminary motion for judgment. Since no belated
motion for judgment was filed, the party Tucholski is
not entitled to raise the issue of a possible
35 U.S.C. § 102(b) bar at the first final hearing.
In this regard, see the Commissioner's Notice of
October 6, 1992, 1144 OG 8, November 3, 1992. See
also Glaser v. Strickland, 217 USPQ 351, 354
(Bd.Pat.Int. 1981) where the party Glaser was denied
additional discovery on an issue of inequitable
conduct because the issue was not raised by motion.
For the foregoing reasons, the Tucholski request
for a time for filing motions for additional
discovery is denied and the Tucholski motion for
additional discovery on the matter of an alleged
35 U.S.C. § 102(b) is dismissed as not having been
seasonably filed.
Opinion re: Issue 3(ii)
An APJ's decision on a motion is presumed to have been
correct and the party attacking that decision has the burden of
showing an abuse of discretion. 37 CFR § 1.655(a). An abuse of
discretion may be found when (1) the decision is clearly
unreasonable, arbitrary or fanciful, (2) the decision is based on
an erroneous conclusion of law, (3) the findings are clearly
Interference No. 103,036
-68-
erroneous, or (4) the record contains no evidence upon which the
APJ rationally could have based the decision. Cf. Abrutyn v.
Giovanniello, 15 F.3d at 1050-51, 29 USPQ at 1617.
The party Tucholski has not met its burden to show an
abuse of discretion. The APJ denied the motion for additional
discovery for two reasons--the motion was not promptly filed
after learning of the two consumer surveys and the party
Tucholski failed to file a belated preliminary motion for
judgment. The party Tucholski has not shown where these reasons
are incorrect.
If a party does not raise an issue via a preliminary
motion, the party is not entitled to be heard at final hearing on
that issue. 37 CFR § 1.655(c); General Instrument Corp. Inc. v.
Scientific-Atlanta Inc., 995 F.2d 209, 212, 27 USPQ2d 1145,
1146-47 (Fed. Cir. 1993). If a party has not filed a preliminary
motion raising an issue, the party is not entitled to additional
discovery on that issue. Glaser v. Strickland, 217 USPQ 351, 354
(Bd. Pat. Int. 1981). The fact that the party Tucholski may not
have had all the facts to support a preliminary motion for
judgment on the alleged issue of prior public use is not a
Interference No. 103,036
-69-
sufficient excuse for failing to file the motion. Certainly, if
the party Tucholski believed that additional evidence in the form
of testimony was required to support its motion, the party could
have availed itself of the provisions of § 1.639(c) to (g) and
described the nature of any proposed testimony. If the party
Tucholski needed evidence which is in possession of an opponent,
the party Tucholski could have explained the evidence sought,
what it will show, and why it is needed. However, the party
Tucholski did not avail itself of these provisions.
The party Tucholski's reliance on Perkins v. Kwon, 886
F.2d 325, 328, 12 USPQ2d 1308, 1310 (Fed. Cir. 1989) is
misplaced. In Perkins, 886 F.2d at 328, 12 USPQ2d at 1311, the
Court agreed with the Board "that issues of patentability and
priority that have been fully developed before the Board should
be resolved by the Board." In this case, the issue of
patentability has not been fully developed, much less properly
raised by the party Tucholski. Thus, we are under no obligation
to determine the issue.
Interference No. 103,036
-70-
For the foregoing reasons, we hold that the party
Tucholski has not sustained its burden to show an abuse of
discretion.
Issue 3(iii)
With respect to issue 3(iii), the party Tucholski urges
that the APJ abused his discretion by permitting the senior party
Burroughs et al. to raise its "Category B" motions at the first
final hearing. The party Tucholski contends that raising these
motions resulted "in added expense, time and complication for the
parties involved in this interference and for the Board."
In Interlocutory Order No. 8, Section VI, the APJ
acknowledged the senior party Burroughs et al.'s request to have
17 motions reviewed at the first final hearing, ordered the
senior party to categorize its motions, and stated that the
senior party would be permitted to raise at the first final
hearing its motions which relate to the right of the junior
parties Tucholski and Cataldi et al. to remain in this
interference and which do not rely upon the consideration of any
affidavit evidence submitted by any party in its motion,
opposition, or reply. These motions (two) were later identified
Interference No. 103,036
-71-
as "Category A" motions. Of these two motions, the APJ only
authorized the senior party Burroughs et al. to seek review at
the first final hearing of its motion under 37 CFR §§ 1.635 and
1.662(b) and its supplement thereto against Cataldi et al. (Paper
Nos. 425 and 553).
In response to the requirement, the senior party
identified five categories of motions--A to E. The category B
motions (three preliminary motions for judgment (Paper Nos. 91 to
93) and two miscellaneous motions (Paper Nos. 480 and 487)
relate to the right of the junior parties Tucholski and Cataldi
et al. to remain in this interference and rely upon the
consideration of affidavit evidence. The senior party requested
reconsideration of the APJ's decision to deny the senior party
the right to rely upon the category B motions. Upon
reconsideration, the APJ authorized the senior party to seek
review of the category B motions, since they rely upon
declarations, which were presented in the senior party's
oppositions to the junior parties' motions. The only other
evidence, not relied upon in the oppositions, are the
declarations of Mr. Peterson which introduce certain press
Interference No. 103,036
-72-
releases into the record. See Interlocutory Order No. 9, Section
IV.
Opinion re: Issue 3(iii)
The junior party Tucholski's position on this matter is
untenable. The APJ has not caused added expense and complication
to this proceeding by permitting the senior party to seek review
of its Category B motions. As the APJ noted, the senior party is
already relying upon all of the declarations, except the
aforesaid declarations of Mr. Peterson, to support the senior
party's oppositions to the junior parties' motions. Under those
circumstances, we find no abuse of discretion in the APJ's
actions. Nor did the APJ's action unduly delay or complicate
this proceeding.
Issue 3(iv)
With respect to item 3(iv), the motion is dismissed as
moot inasmuch as the party Tucholski's reply has withdrawn this
item.
Retention of the Party Tucholski--Issue (4)
The party Tucholski requests that it be retained as a
party to this interference regardless of the outcome of the first
Interference No. 103,036
-73-
final hearing in order to participate in the priority phase of
the interference. The party Tucholski states that it has a
vested interest in prevailing or, if that is impossible, in
ensuring that none of the other parties receives a patent on the
subject matter at issue. The party Tucholski contends that if it
and the party Cataldi et al. are "prematurely eliminated" from
the interference after the first final hearing and the party Wang
et al. receives a patent without their ever having been afforded
an opportunity to contest the party Wang et al.'s 102(g)
priority, then the party Wang et al. will be in a position to
require the parties Tucholski and Cataldi et al. to unfairly pay
royalties and to sue them for infringement. The request is
denied.
It is not unjust to eliminate a junior party from a
multi-party interference where that party's claims are
unpatentable to the party. See Qadri v. Chu, 18 USPQ2d 1254 (Bd.
Pat. App. & Int. 1990), aff'd. w/o memo. In this case, the
junior party Tucholski has lost the priority contest vis-à-vis
the senior party Burroughs et al. and is not entitled to any of
its claims corresponding to the count. Even if the junior party
Interference No. 103,036
-74-
Wang et al. were to prove priority of invention vis-à-vis the
party Burroughs et al., that would not change the fact that the
party Tucholski lost the priority contest to the party Burroughs
et al. Since the party Tucholski's claims are not patentable,
the party Tucholski has no right to remain in this interference.
As the proceeding now stands, the issuance of judgment
against the party Tucholski is deemed proper, inasmuch as we have
held that the party Burroughs et al.'s claims 13 to 29, 33 to 40
and 43 to 51 are not unpatentable for the reasons alleged by the
party Tucholski. Even if we held that the Burroughs et al.
claims 13 to 29, 33 to 40 and 43 to 51 were unpatentable for the
reasons alleged by the party Tucholski, the party Tucholski did
not attack the patentability of the party Burroughs et al.'s
original patent claim 1 to 11 corresponding to the count, and
these claims would remain in the interference.
Motion to Compel--(Issue 7)
In the motion, the party Tucholski requests that we
compel the party Burroughs et al. to produce Messrs. James R.
Burroughs and Alan N. O'Kain for examination upon their joint
declaration under Rule 132, which was filed ex parte in the
Interference No. 103,036
-75-
Burroughs et al. involved reissue application. According to the
motion, the declaration acknowledges that the examiner rejected
claim language on the ground that the disclosure fails to teach
thermal insulative means and that on the basis of this
declaration and related argumentation, the party Burroughs et al.
were deemed to be a proper participant in this interference. The
motion also relies upon the APJ’s Interlocutory Order No. 9 which
authorizes a party to call an opposing party’s declarant, who is
not relied upon by the opposing party, as a hostile witness
pursuant to 37 CFR § 1.671(g) and urges that the party Burroughs
et al.’s failure to produce the declarants is sanctionable.
37 CFR § 1.671(g) requires that a motion "shall
describe the general nature and the relevance of the
testimony. . . . " Since the motion to compel does not describe
the general nature and relevance of the requested testimony, the
motion fails to comply with the rule. Since the APJ’s
interlocutory order cannot waive the requirements of the rule, we
decline to issue any sanction against the party Burroughs et al.
In any event, the party Tucholski was not unduly prejudiced since
it had the opportunity to rely upon its own experts and those of
Interference No. 103,036
-76-
the other opposing parties who testified on the question of the
adequacy of the Burroughs et al. specification.
For the foregoing reasons, the motion is denied.
Unpatentability of the Party Tucholski's Claims (Issue 8)
The Burroughs et al. brief requests that we decide the
Burroughs et al. preliminary motion for judgment under 37 CFR
§ 1.633(a) that the party Tucholski's claims corresponding to the
count are unpatentable over Burroughs et al.'s involved patent.
The motion is dismissed as moot inasmuch as we are issuing
judgment against the party Tucholski for the failure of its
preliminary statement to overcome the filing of the senior party
Burroughs et al. As a result of the judgment, the party
Tucholski is not entitled to its claims corresponding to the
count. Consequently, it is not necessary for us to decide
whether the claims are also unpatentable over prior art.
JUDGMENT
Judgment with respect to the subject matter of the
count in issue is hereby entered against Gary R. Tucholski, the
junior party. Accordingly, on the present record,
Interference No. 103,036
-77-
the party Tucholski is not entitled to a patent containing claims
1 to 35 and 46 to 70.
)
____________________________)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
____________________________) BOARD OF PATENT
RONALD H. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
____________________________)
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )

Application 07/730,712, filed July 16, 1991. Assignors to21
Duracell International Inc.
Application 07/641,394, filed January 15, 1991. Assignors22
to Eveready Battery Co., Inc., St. Louis, MO.
Application 07/504,504, filed April 4, 1990, now U.S. Patent23
No. 5,059,895, issued October 22, 1991. Assignors to Eastman Kodak
Co.
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. 802
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
CHI-CHUNG WANG, TERRY C. EISENSMITH, CHARLES E. KIERNAN
AND ROBERT L. MILANESE
Junior Party,21
v.
GARY R. TUCHOLSKI
Junior Party,22
v.
RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (PATENT)
Junior Party,23
Interference No. 103,036
Reissue Application 07/942,973, filed September 10, 1992. 24
Accorded Benefit of U.S. Applications 07/504,504, filed April 4,
1990, and 5,059,895, issued October 22, 1991. Assignors to Eastman
Kodak Co.
Application 07/308,210, filed February 8, 1989, now U.S.25
Patent No. 5,015,544, issued May 14, 1991. Assignors to Strategic
Energy, Ltd.
Reissue Application 07/963,915, filed October 20, 1992. 26
Accorded Benefit of U.S. Application No. 07/308,210, filed
February 8, 1989, now Patent No. 5,015,544, issued May 14, 1991.
Assignors to Strategic Energy Ltd.
-2-
RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (REISSUE)
Junior Party,24
v.
JAMES R. BURROUGHS AND ALAN N. O’KAIN (PATENT)
Senior Party,25
JAMES R. BURROUGHS AND ALAN N. O’KAIN (REISSUE)
Senior Party.26
____________
Interference No. 103,036
____________
FINAL HEARING: MAY 29, 1997
____________
Before URYNOWICZ, RONALD H. SMITH, and SOFOCLEOUS, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
Interference No. 103,036
-3-
FINAL DECISION WITH RESPECT TO THE PARTY CATALDI ET AL.
The subject matter of this interference relates to a
battery with a strength indicator. The count of this
interference is as follows:
Count 1
A battery having a label with an integral voltmeter; wherein the
voltmeter comprises:
A) a dielectric layer;
B) a conductive layer above or below the dielectric layer; and
a temperature sensitive color indicator layer in thermal contact
with the conductive layer, characterized in that 1) the
conductive layer has i) sufficient heat generating capacity to
affect a change in the temperature sensitive color indicator
layer and ii) sufficient thermal insulating means under one of
its surfaces to overcome heat sinking when the voltmeter is in
contact with a battery having an electrically conducting housing
and 2) the voltmeter includes means for forming an electrical
switch with the electrically conductive battery housing.
The party Wang et al.'s claims 22 to 24 and 43 to 63,
the party Tucholski's claims 1 to 35 and 46 to 70, the party
Cataldi et al.'s patent claims 9 to 29, the party Cataldi et
al.'s reissue claims 9 to 25 and 28 to 40, the party Burroughs et
al.'s patent claims 1 to 11 and the party Burroughs et al.'s
reissue claims 13 to 51 correspond to the count.
In Interlocutory Order No. 2, dated May 10, 1996 (Paper
No. 494), the Administrative Patent Judge (APJ) listed and
acknowledged the 91 preliminary and miscellaneous motions and
Interference No. 103,036
In an order, dated December 12, 1994 (Paper No. 77), the APJ27
in charge of the interference at that time authorized the parties to
file comments in support of or in opposition to a motion directed at
another party.
This section reads, in part, as follows:28
§ 1.640 Motions, hearings and decision, redeclaration of
interference, order to show cause.
* * * * *
(d) An administrative patent judge may issue an order to
show cause why judgment should not be entered against a party when:
* * * * *
(3) The party is a junior party whose preliminary
statement fails to overcome the effective filing date of another
party.
-4-
requests, the various oppositions, replies thereto and comments27
to various oppositions and replies, filed by the parties. In
addition, the APJ opened preliminary statements and ordered their
service. At the same time, the APJ placed the junior parties
Tucholski and Cataldi et al. under an order pursuant to 37 CFR
§ 1.640(d)(3) to show cause why judgment should not be entered28
against them in view of the fact that the dates alleged in their
preliminary statements did not overcome the filing date of the
senior party Burroughs et al.
The junior parties Tucholski and Cataldi et al. filed
responses to the show cause order. The purpose of this final
Interference No. 103,036
The accompanying final decisions address the issues raised by29
the party Tucholski and by the party Wang et al.
-5-
hearing is to determine whether the junior parties Tucholski29
and Cataldi et al. have shown sufficient cause to avoid the entry
of judgment against them. This decision addresses the issues
raised by the party Cataldi et al.
In its response (Paper No. 502) to the show cause
order, the party Cataldi et al. urges that a favorable decision
on its preliminary motions for judgment against the party
Burroughs et al. would vitiate the show cause order under 37 CFR
§ 1.640(d)(3). If the senior party Burroughs et al.'s claims are
held to be unpatentable as urged in the aforesaid preliminary
motions, then the senior party Burroughs et al. would be removed
from the interference and the interference would then proceed as
a three-party interference with the party Cataldi et al. as the
senior party. In that circumstance, the party Cataldi et al.
would be entitled to take priority testimony.
The party Cataldi et al. also requested final hearing
to consider its preliminary motion nos. 1 to 4, 23, 24, 32 and
38. In Interlocutory Order No. 4, mailed July 19, 1996, the APJ
granted the request to the extent that this case would be set
down for final hearing to consider such matters as may be
Interference No. 103,036
-6-
pertinent under 37 CFR § 1.655, with the caveat, "[n]o other
motions will be reviewed."
In addition, the party Cataldi et al. filed a motion
(Paper No. 503) for a testimony period to introduce evidence in
support of its preliminary motions and its oppositions to the
other parties' preliminary motions. The APJ granted the motion
to the extent that the party Cataldi was authorized to introduce
into evidence only that evidence relied upon in its preliminary
motion nos. 1 to 4, 23, 24, 32 and 38 (Paper Nos. 101 to 104,
123, 124, 296 and 362), in its replies (Paper Nos. 270 to 273,
292, 293, 355 and 392) and in its oppositions to any opponent's
motion which would be reviewed. The APJ's order states, "[n]o
other evidence may be introduced." See Section V of
Interlocutory Order No. 4, dated July 19, 1996 (Paper No. 534)
and page 17 of Interlocutory Order No. 9, dated October 29, 1996
(Paper No. 632).
The parties Wang et al., Tucholski, Cataldi et al. and
Burroughs et al. took testimony, filed records and briefs, and
appeared through counsel, at final hearing.
Interference No. 103,036
On page 156 of its main brief, the party Cataldi et al.30
withdraws consideration of its motion no. 4 in favor of its motion
no. 32.
-7-
ISSUES
The junior party Cataldi et al.'s opening brief30
raises the following issues:
1. Whether we should decide motion nos. 10, 11, 17, 22, 31, 33
to 37, and 39.
2. Whether the senior party Burroughs et al.'s patent claims 1
to 11 and reissue claims 13 to 32, 34 to 36 and 38 to 51 should
be designated as not corresponding to the count, as urged in
motion no. 1?
3. Whether the senior party Burroughs et al.'s patent claims 1
to 11 are invalid and reissue claims 13 to 51 are unpatentable
under 35 U.S.C. § 112, second paragraph, as urged in motion no.
2?
4. Whether the senior party Burroughs et al.'s reissue claims 13
to 51 are unpatentable under 35 U.S.C. § 112, first paragraph,
for lack of adequate written description and for being based on a
non-enabling disclosure, as urged in motion no. 3?
5. Whether the senior party Burroughs et al.'s reissue claims 1
to 51 are unpatentable on the ground of double patenting, as
urged in motion no. 23?
Interference No. 103,036
-8-
6. Whether the senior party Burroughs et al.'s reissue claims 13
to 51 are unpatentable for failure to comply with 35 U.S.C.
§ 251, as urged in motion no. 24?
7. Whether the party Cataldi et al.'s motion no. 32 to
substitute proposed count 4 should be granted?
8. If the senior party Burroughs et al.'s motion to amend its
reissue claim 40 is granted, whether the party Cataldi et al.'s
motion no. 38 should be considered.
In Interlocutory Order No. 10, consideration of the
party Cataldi et al.'s miscellaneous motion no. 46 (Paper No.
665) against the party Burroughs et al. was deferred to final
hearing provided that the party Cataldi et al. file a paper
within five days after final hearing requesting consideration of
the matters. Review of this motion has not been sought.
The senior party Burroughs et al.'s opening brief
raises the following issues with respect to the party Cataldi et
al.:
9. Whether the party Cataldi et al.'s reissue claims are
unpatentable over prior art.
10. Whether the party Cataldi et al.'s patent claims are
unpatentable over prior art.
11. Whether judgment should be entered against the party Cataldi
et al. under the provisions of 37 CFR § 1.662(b).
Interference No. 103,036
-9-
MATTERS NOT ENTITLED TO REVIEW AT FINAL HEARING
Issue (1)
In its opening brief (Paper No. 712), the junior party
Cataldi et al. requests that we decide, either before or at the
first final hearing, its motion nos. 10, 11, 17, 22, 31, 33 to
37, and 39.
We decline to decide the aforesaid motions, since they
are not identified in Cataldi's request (Paper No. 502, filed
May 30, 1996) for final hearing. The request only seeks final
hearing to review the following motions:
Preliminary motion nos. 1 to 4, 23, 24, 32
and 38 (Paper Nos. 101 to 104, 123, 124, 296
and 362).
Interlocutory Order No. 4, granting the party Cataldi et al.'s
request for final hearing, states that this case would be set
down for final hearing to consider such matters as may be
pertinent under 37 CFR § 1.655 and that no other motions would be
reviewed. To now consider motions other than those specifically
identified in the party Cataldi et al.'s request for final
hearing would be contrary to the order and prejudicial to the
rights of the opposing parties. In accordance with 37 CFR
§ 1.655(b), the interlocutory order is presumed to have been
correct, and the burden is upon the party, here the party Cataldi
Interference No. 103,036
-10-
et al., attacking the order to show an abuse of discretion. No
abuse of discretion has been shown.
Interlocutory Order No. 10, Section III, defers to
final hearing consideration of seven miscellaneous motions and
one request for reconsideration provided that each party filing a
motion or request file a paper requesting review of the motion or
request at final hearing. This order, however, does not
authorize any party to seek review of any motions (preliminary or
miscellaneous) which were acknowledged earlier by the APJ in any
of his prior orders, but rather authorizes each party to seek
review of the motions and the request for reconsideration
specifically identified in the Section III of the order.
To the extent that both the party Cataldi et al.'s
paper (Paper No. 790) filed in response to Interlocutory Order
No. 10, Section III and the party Cataldi et al.’s opening brief
include a request for review of motion nos. 10, 11, 17, 22, 31,
33 to 37, and 39, which were not identified in Interlocutory
Order No. 10, Section III, the request is dismissed as being
belatedly filed in the absence of a miscellaneous motion under
37 CFR §§ 1.635 and 1.645(b) to excuse the belatedness.
Interference No. 103,036
-11-
Issue (2)
The party Cataldi et al.'s opening brief requests that
we decide the party Cataldi et al.'s motion no. 1, which urges
that the party Burroughs et al.'s patent claims 1 to 11 and
reissue claims 13 to 32, 34 to 36 and 38 to 51 should be
designated as not corresponding to the count. The motion is
dismissed as being inconsistent with the position taken by the
party Cataldi et al. earlier in this proceeding.
On December 30, 1992, this interference was declared
between the Wang et al. application and the Cataldi et al.
patent. Thereafter, the interference was redeclared on
August 19, 1994, by adding the Tucholski application, the Cataldi
et al. reissue application and the Burroughs et al. reissue
application, the Burroughs et al. patent not being involved in
the proceeding. After the redeclaration of the interference,
counsel for the party Cataldi et al. initiated a telephone
conference call with both Judge Ronald H. Smith, the APJ then in
charge of the interference, and counsel for the party Burroughs
et al. During the conference call, counsel for the party Cataldi
et al. requested that the Burroughs et al. patent be added to
this interference, because both the Cataldi et al. reissue
Interference No. 103,036
-12-
application and patent were involved in this interference whereas
the Burroughs et al. patent was not. As a result of the
conference call, Judge Smith redeclared the interference (Paper
No. 51, mailed September 14, 1994) by adding the Burroughs et al.
patent.
To have the Burroughs et al. patent added to the
interference, one or more of its claims had to be directed to the
same patentable invention as all the parties' claims then
corresponding to the count. At the time of the conference call,
by requesting that the Burroughs et al. patent be added to this
interference, counsel for Cataldi et al. was representing that
the claims of the Burroughs et al. patent were directed to the
same patentable invention as all the parties' claims then
designated as corresponding to the count. Counsel for the party
Burroughs et al. did not oppose the addition of the Burroughs et
al. patent to this proceeding.
The party Cataldi et al.'s present position in its main
brief is inconsistent with its position taken during the
conference call. A party’s change in position, such as here, is
considered improper, especially where the party obtains a
judicial benefit on its previous position. Cf. Bosies v.
Interference No. 103,036
In response to the motion no. 2, the party Burroughs et al.31
filed an amendment. Since we entered the amendment, we will consider
motion no. 38 which concerns the patentability of reissue claim 40.
-13-
Benedict, 27 F.3d 539, 544, 30 USPQ2d 1862, 1866 (Fed. Cir.
1994). In this case, the benefit obtained by the party Cataldi
et al. is (i) to have all the Burroughs et al. patent claims
designated as corresponding to the count so that if the party
Burroughs et al. loses the priority contest, the party Burroughs
et al. would lose all of its patent claims designated as
corresponding to the count and (ii) to have the opportunity to
file another preliminary motion for judgment, i.e., motion no.
24, a motion which the party Cataldi et al. seeks review of at
this hearing.
For the foregoing reasons, the party Cataldi et al.'s
motion no. 1 is dismissed.
MATTERS ENTITLED TO REVIEW AT FINAL HEARING
Patentability of the Party Burroughs et al.'s
Claims (Issues 3 to 6 and 8)
Issues (3 and 8)
The party Cataldi et al.'s opening brief requests that
(i) we decide the party Cataldi et al.'s motion nos. 2 and 3831
which urge that the party Burroughs et al.'s patent claims 1 to
Interference No. 103,036
This amendment was presented in the Burroughs et al. reissue32
application and is referred to in the party Burroughs et al.'s
oppositions to motion nos. 2 and 3.
-14-
11 are invalid and reissue claims 13 to 51 are unpatentable under
35 U.S.C. § 112, second paragraph.
In response to the motion no. 2, the party Burroughs et
al. filed an opposition and an amendment canceling claims 17,32
21, 34 and 38, amending claims 18 and 19 to depend from claim 16,
amending claim 22 to depend from claim 20, amending claim 23 to
depend from claim 16, amending claims 35 and 36 to depend from
claim 33, amending claim 39 to depend from claim 37, and amending
claims 40 and 43 to depend from claim 37. By canceling and
amending the claims, the party Burroughs et al. is acquiescing to
the grounds of unpatentability raised against these claims.
Accordingly, to simplify the matters for consideration, the
Burroughs et al. amendment is entered and the APJ is directed to
redeclare this interference to reflect the amendment of the
Burroughs et al. claims. Thus, we will consider the motion as it
relates to patent claims 1 to 11 and reissue claims 13 to 16, 18
to 20, 22 to 33, 35 to 37 and 39 to 51.
As the moving party, the party Cataldi et al. has the
burden of proof by a preponderance of the evidence on the motion.
Interference No. 103,036
-15-
Kubota v. Shibuya, 999 F.2d 517, 519 n.2, 27 USPQ2d 1418, 1420
n.2 (Fed. Cir. 1993) ("The term 'burden of proof' as used herein,
and as we understand it to be used in § 1.633, means the burden
to establish the proposition at issue by a preponderance of the
evidence.") The burden upon the party Cataldi et al. is the same
as that upon an examiner who rejects a claim under 35 U.S.C.
§ 112, second paragraph, i.e., to establish that one of ordinary
skill in the pertinent art, when reading the claims in light of
the supporting specification, would not have been able to
ascertain with a reasonable degree of precision and particularity
the particular area set out and circumscribed by the claims. In
re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In
re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970)
(The purpose of 35 U.S.C. § 112, second paragraph is to provide
those who would endeavor, in future enterprise, to approach the
area circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance).
Interference No. 103,036
-16-
We have reviewed the Burroughs et al. claims in light
of the arguments raised by the party Cataldi et al. We agree
with the party Burroughs et al. that most of the objections are
"nit-picking." For example, claim 1 recites "[a] battery having
a battery strength indicating means . . .comprising a
battery . . . ." The party Cataldi et al. urges that this claim
is indefinite and makes no sense because it recites "that a
battery comprises a battery." We agree with the party Burroughs
et al. that one skilled in the art would be able to ascertain the
metes and bounds of claim 1 with a reasonable degree of
certainty. Other objections to most of the remaining claims are
of a similar vein and we will not repeat them.
The party Cataldi et al. also urges that claims 35 and
36, which depend upon claim 33, and claim 40, which depends upon
claim 37, are indefinite for lack of antecedent support. Claim
35 and 36 recite "the temperature insulating means" of claim 33,
whereas claim 33 recites "a thermal insulating means." Claim 40
recites "the dielectric substrate" of claim 37, whereas claim 37
recites "a dielectric layer." In our view, the term, temperature
insulating means, finds reasonable antecedent support in the
previously recited thermal insulating means of claim 33. Like-
Interference No. 103,036
Claim 30 contains an obvious misspelling of the word "affect,"33
which can be corrected upon the resumption of ex parte prosecution.
-17-
wise, the term dielectric substrate of claim 40 finds reasonable
antecedent basis in the previously recited dielectric layer of
claim 37. In our view, the scope of these claims would be
reasonably ascertainable by those skilled in the art. Cf. Ex
parte Porter, 25 USPQ2d 1144, 1146 (Bd. Pat. App. & Int. 1992).
We agree with the party Cataldi et al. that the
Burroughs et al. claim 31 is indefinite for lack of antecedent
support. Claim 31 recites "the insulating means" of claim 30,
whereas claim 30 recites "an air pocket." Since insulating33
means is a broader term than air pocket, the term, air pocket,
would not provide proper antecedent support for the term,
insulating means, of claim 31. We also agree with the party
Cataldi et al. that claim 50 is indefinite because the term
"coupling means" is not defined in the Burroughs et al.
specification. The specification does not show any structure for
the coupling means. We do not agree with the party Burroughs et
Interference No. 103,036
-18-
al. that the structure is shown where the pyrotechnic chemical is
surrounded by the color indicating, heat sensitive material, or
by the alternative embodiment where the device is fabricated
without the pyrotechnic chemical so that the heat sensitive
material contacts the conductive area. In our view, the coupling
means is not equivalent to the heat sensitive material contacting
the conductive area, because no other interaction other than
contacting is specified.
For the foregoing reasons, the Cataldi et al. motion
no. 2 is denied with respect to the Burroughs et al. patent
claims 1 to 11 and reissue claims 13 to 16, 18 to 20, 22 to 30,
32, 33, 35 to 37, 39 to 49 and 51 and is granted with respect to
the Burroughs et al. reissue claims 17, 21, 31, 34, 38, and 50.
The entry of judgment as to these latter claims is deferred to
the next final hearing, since we do not normally enter a
piecemeal judgment with respect to a party.
Issue (4)
The party Cataldi et al.'s opening brief requests that
we decide whether the party Burroughs et al.'s reissue claims 13
to 51 are unpatentable under 35 U.S.C. § 112, first paragraph, as
Interference No. 103,036
The party Cataldi et al. has also filed a miscellaneous motion34
no. 47 to strike, inter alia, certain testimony of Dr. Powers,
because the testimony comprises incompetent legal opinions proffered
by a lay witness. Since we will evaluate Dr. Powers' testimony as to
facts and not as to legal opinions, the motion is dismissed as
unnecessary. Insofar as the motion requests that testimony adduced
by other witnesses be stricken, the motion is dismissed as moot since
we do not rely upon that testimony.
The party Cataldi et al. relies upon its proposed findings of35
fact Nos. (175) to (181) to support a lack of credibility.
The party Cataldi et al. relies upon its proposed findings of36
fact Nos. (182) to (196) to support its assertion of legal
incompetence.
-19-
urged in motion no. 3. Since we have entered the party Burroughs
et al.'s amendment in our decision on Issue (3), supra, we will
consider the motion as it relates to reissue claims 13 to 16, 18
to 20, 22 to 33, 35 to 37 and 39 to 51. As the moving party, the
party Cataldi et al. has the burden of proof by a preponderance
of the evidence on the motion. Kubota v. Shibuya, 999 F.2d 517,
519, n.2, 27 USPQ2d 1418, 1420, n.2. Preliminarily, in item (1),
the party Cataldi et al. urges that we give no weight to the34
direct testimony of Dr. Powers because the cross-examination
indicates that his direct testimony is not credible, and that35
the opinions in his direct testimony are legally incompetent. 36
The party Cataldi et al. urges that since Dr. Powers could not
Interference No. 103,036
The party Cataldi et al. relies upon its proposed findings of37
fact Nos. (197) to (205) to support its conclusion that Dr. Powers
did not understand the Kiernan patent.
The Burroughs et al. patent specification, column 5, lines 5038
to 52, states that Figure 10 is "a top plan view." Other figures,
i.e. 1, 1A, 4, and 11, are also identified as top views or top plan
views. A review of these figures shows that they are not standard
top views, but rather are a hybrid between a top view and a side
view. Since we are able to ascertain what these figures depict, we
have no doubt that one skilled in the art would also be able to
ascertain what they depict.
The party Cataldi et al. relies upon its proposed findings of39
fact Nos. (206) to (214) to support its contention concerning Figure
10.
-20-
understand the figures in the Kiernan et al. patent and could37
not interpret Figure 10 of the party Burroughs et al.'s38
specification, Dr. Powers' testimony with respect to these39
matters should be given no weight. We decline to accord
Dr. Powers' testimony no weight, but rather will evaluate his
testimony insofar as it relates to the matters which we must
decide.
The motion under consideration urges that the Burroughs
et al. specification lacks written description for 14 limitations
recited in its claims. For ease of reference, we have retained
the same numbering, i.e., items 2 to 15, as in the party Cataldi
et al.'s main brief.
Interference No. 103,036
-21-
The written description requirement of 35 U.S.C. § 112,
first paragraph, requires that an application convey with
reasonable clarity to those skilled in the art that, as of its
filing date, applicant was in possession of the invention. Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). To comply with the description
requirement, it is not necessary that the application describe
the claimed invention in ipsis verbis, In re Lukach, 442 F.2d
967, 969, 169 USPQ 795, 796 (CCPA 1971); all that is required is
that the application reasonably convey to persons skilled in the
art that, as of the filing date thereof, the inventor had
possession of the subject matter later claimed by him. In re
Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).
In item 2, the motion urges that the Burroughs et al.
specification does not contain a written description for "a
sealed chamber, cell or bubble" limitation of reissue claims 13
to 15, 19, 23, and 27. The motion relies upon the testimony of
Dr. Feder at pages 44 to 55 of the party Cataldi et al.'s record
(CR 44 to 55). Dr. Feder testified that the Burroughs et al.
specification does not disclose this limitation as being a part
of the structure of the voltage indicator but rather discloses
Interference No. 103,036
-22-
this limitation as being a part of the switch. The motion is
denied with respect to item 2.
We agree with the party Burroughs et al. that the
specification, column 4, lines 21 to 38, teaches a battery
strength indicator comprising attached first and second
nonconductive layers with "a portion of said first and second
nonconductive layers forming a chamber therebetween," and "a
conductive layer sandwiched between said first and second
nonconductive layers, the conductive layer reduced to a small
cross-sectional area in the chamber." Obviously, if the chamber
is sandwiched by the surfaces of the first and second
nonconductive layers, the chamber is below one of the surfaces.
Further, the specification, column 6, lines 5 to 7, states that
the indicator device has an indicator chamber, cell or bubble.
This disclosure, in our view, contains a sufficient written
description for the limitation as being a part of the voltage
indicator device.
In item 3, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"switch" limitation of reissue claims 16 to 29, 33 to 40 and 44
to 51. Since claims 17, 21, 34 and 38 were cancelled, this item
Interference No. 103,036
-23-
will be considered as to claims 16, 18 to 20, 22 to 29, 33, 35 to
37, 39, 40 and 44 to 51. Independent claims 16, 20, 24, 50, and
51 recite that the voltage indicator means or voltage indicator
includes means for forming an electrical switch with an electri-
cally conductive portion of the battery housing. Independent
claims 33 and 37 recite that the voltmeter includes means for
forming an electrical switch with the electrically conductive
battery housing. Independent claim 44 recites an electrical
switch means positioned "to couple electrically the conductive
layer and the battery can." The motion relies upon the testimony
of Dr. Feder who testified that the electrical switch is not
connected to an electrically conductive part of the battery
housing, but rather is connected to either the anode or the
cathode of the battery, the anode and cathode not being a part of
the battery housing. CR 405. The motion is denied as to item 3.
We agree with the party Burroughs et al. that its
specification, column 5, lines 20 to 22, teaches that "the
improved batteries can have switch means to electrically connect
the battery strength indicator to the battery." Figure 2 and the
accompanying description in the specification show and describe a
battery having a housing to which is attached the strength or
Interference No. 103,036
-24-
voltage indicator device. We agree with the party Burroughs et
al. that the terms, "battery housing" and "battery can,"
necessarily mean that the housing or the can includes both an
anode and a cathode. In this regard, Dr. Powers testified that
the battery of Figure 2 of the Burroughs et al. patent has an
anode 20 and a cathode as part of the battery housing. Burroughs
Record, page 28 (BR 28). The electrical switch in Figure 2 is
attached to the anode or cathode. As is well known to the
skilled person in the art, both the anode and cathode portions of
the battery housing are electrically conducting. This
disclosure, in our view, contains a sufficient written
description for the limitation in question.
In making our finding, we have weighed Dr. Feder's
testimony at CR 405 that the anode and cathode of a battery are
not a part of the battery housing against the testimony of
Dr. Powers that the anode and cathode of a battery are a part of
the battery housing. We find that Dr. Power's testimony is more
credible than Dr. Feder's testimony. Dr. Feder's testimony at
CR 405 is inconsistent with Figure 3 of the party Cataldi et
al.'s involved patent which depicts the battery housing 4 as
including both the anode and cathode and with his testimony at
Interference No. 103,036
-25-
BR 3649 that in the case of an alkaline battery, the cylindrical
can, including the closed end, and the closure for the other end
of the battery, comprises the battery housing. Thus, according
to Dr. Feder, the ends of an alkaline battery, which include the
anode and cathode, are a part of the battery housing.
For the foregoing reasons, the motion is denied as to
item 3.
In item 4, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"substrate" limitation of reissue claims 17 to 19, 21 to 23, 34
to 36 and 38 to 40. Since the party Burroughs et al. canceled
and/or amended these claims, the motion is dismissed as moot with
respect to this item.
In item 5, the motion urges that the Burroughs et al.
specification does not contain a written description for the
limitation, "sufficient means under one of its [the conductive
layer's] surfaces to permit the heat generated" by the conductive
layer to change the color of the temperature sensitive color
indicator, of reissue claims 16 to 23. Since claims 17 and 21
were canceled, this item will be considered as to claims 16, 18
Interference No. 103,036
-26-
to 20, 22 and 23. The motion relies upon the testimony of Dr. Feder.
The Burroughs et al. specification
The Burroughs et al. specification, column 4, lines 21
to lines 38, discloses the following embodiment:
In another embodiment of the
present invention, the battery-strength
indicator means comprises:
(a) a first nonconductive layer;
(b) a second nonconductive layer
attached to the first nonconductive layer, a
portion of said first and second non-
conductive layers forming a chamber
therebetween;
(c) a conductive layer sandwiched
between said first and second nonconductive
layers, the conductive layer reduced to a
small cross-sectional area in the chamber;
and
(d) a heat sensitive color-
indicating material in said sealed chamber
that is adapted to undergo a color change
when its temperture [sic] exceeds or crosses
a predetermined value, said conductive layer
in the chamber rising to a predetermined
temperture [sic] when the voltage of the
current flowing therethrough exceeds a
predetermined value.
Figure 10 of the Burroughs et al. patent is as follows:

Concerning Figure 10, the Burroughs et al. specifi-
cation, column 8, line 26 to column 9, line 3, reads as follows:
Interference No. 103,036
-27-
Another embodiment of the battery-
strength indicator device of the present
invention is shown in FIG. 10. The indicator
device 10D is a strip like device having
first and second superimposed layers 30 and
32 which are attached together in the same
manner as strips 30 and 32 in FIG. 3. At
least one of the strips is transparent.
Conductive layers 64 are sandwiched between
the first and second layers. The conductive
layer is reduced to a small cross-section 65
in the indicator zone 66. Within the
indicator zone, the conductive layer is
covered with a small amount of a pyrotechnic
chemical 68 sensitive to heat. Surrounding
the pyrotechnic chemical is a color
indicating, heat-sensitive material 70 which
will undergo a visible color change, either
permanent or temporary, when the material is
heated to at least a predetermined
temperature. This battery-strength indicator
device is a one-shot device; the pyrotechnic
chemical will only decompose or react once.
The pyrotechnic chemical undergoes rapid
decomposition when it is heated to a
predetermined temperature. The resistance of
the conductive layer in the reduced cross-
sectional area 5 is selected such that
current flow at a minimum predetermined
voltage through the conductive layer will
raise the area to a predetermined temperature
which will cause the pyrotechnic chemically
to decompose or otherwise react. The
pyrotechnic chemical in turn will raise the
temperature of the color-indicating, heat
sensitive material to the predetermined
temperature for color change. [Emphasis
added.]
Although the indicator device of
FIG. 10D is shown with a color-indicating,
heat-sensitive material, the device can also
be fabricated with the pyrotechnic chemical
alone, thereby causing a slight charring to
the strip which is noticeable. One of the
strips can also be made of a material that is
sensitive to temperature and will undergo a
Interference No. 103,036
-28-
visible change when the temperature exceeds a
predetermined value. Alteratively, the
device can be fabricated without the
pyrotechnic chemical, relying on the color-
indicating, heat-sensitive material alone to
indicate whether the battery has a
predetermined minimal voltage output. If the
color indicating, heat-sensitive material
undergoes a non-permanent color change when
exposed to a predetermined temperature, then
the battery-strength indicator device of FIG.
10D can be used repeatedly to determine if
the output voltage of the battery meets a
predetermined voltage level. [Emphasis
added.]
The Party Cataldi et al.'s Position
The party Cataldi et al. relies upon Dr. Feder's
testimony in order to show that the foregoing specification does
not contain a written description for the limitation, "sufficient
means under one of its [the conductive layer's] surfaces to
permit the heat generated" by the conductive layer to change the
color of the temperature sensitive color indicator, of reissue
claims 16 to 23.
Dr. Feder testified (1) that these claims are directed
to the indicator device 10D shown in Burroughs et al.'s Figure 10
[CR 60], (2) that the device does not disclose sufficient means
under one of the conductive layer's surfaces to permit the heat
generated by the conductive layer to change the color of the
temperature sensitive color indicator and to indicate voltage [CR
60], (3) that the specification is completely silent regarding
the effects of thermal conduction of heat from the indicator
Interference No. 103,036
-29-
device to the battery housing [CR 60], (4) that the specification
teaches that the "electrically insulating layers that surround
the conductive layer are very thin," [CR 60], (5) that the
specification at column 7, lines 19 to 21, teaches a thickness
such as one or two mils [CR 61], and (6) that the disclosed
thickness of one or two mils suggests that the electrically
insulating layers for the other disclosed indicator devices have
a similar thickness [CR 61].
Dr. Feder also testified at CR 61 as follows:
(90) It is clear from the party
Burroughs et al.'s original disclosure that
the nonconducting base layer under the
conductive leads 14 is electrically non-
conducting. This is so because the original
disclosure is silent regarding thermal
isolation, because the thickness range of one
to two mils is known to be suitable for
electrical insulation, and because it is well
known that electrical insulation is necessary
to prevent electrical short circuiting.
[Emphasis in the original.]
Referring to the second embodiment of Figure 10, which
is described at column 8, line 62 to column 9, line 3 of the
Burroughs specification, Dr. Feder testified . . .
[I]t is my opinion that this embodiment of
the indicator device 10D would not be useful
because it would not provide an accurate
indication of the voltage state of the
battery. That is so because the conductive
layer 64 could not be made to generate
sufficient heat to overcome the heat sinking
provided by the battery housing in order to
sufficiently increase the temperature of the
heat-sensitive color indicator material. The
Interference No. 103,036
-30-
heat sinking problem arises due to the novel
arrangement of the apparatus. Specifically,
the planar heat sensitive indicator device is
in mechanical contact with the battery
housing over a wide area. The integral
mechanical contact also provides a high rate
of thermal conduction of heat from the
indicator device to the battery. Since this
structure with its attendant functional
requirements is novel to this invention, the
novel problem of heat sinking that is
associated with it was also novel and clearly
was not recognized by the party Burroughs et
al. or by the draftsman of the party
Burroughs et al.'s application. For these
reasons, at least, the heat sinking problem
and a solution to the heat sinking problem
would not have been obvious to one of
ordinary skill in the art in view of the
party Burroughs et al.'s specification.
Therefore, the party Burroughs et al.'s
specification does not teach the concept of a
thermal insulating layer between the conduc-
tive layer and the housing of the battery, as
is recited by claims 16-23. [CR 61 to 62.]
Relying upon Dr. Feder's testimony at CR 61, paragraph
(90), and the decisions of Ex parte Parks, 30 USPQ2d 1234 (Bd.
Pat. App. & Int. 1994) and Schriber-Schroth Co. v. Cleveland
Trust Co., 305 U.S. 47, 39 USPQ 242 (1938), the party Cataldi et
al.'s main brief at page 97 urges that the Burroughs et al.
specification by using a thermally-responsive indicator without a
pyrotechnic material (the second embodiment) cries out for the
mention of a thermal insulator, "given that plastic of only 1 or
2 mils thickness is not sufficient to act as a thermal insulator,
even though it is of sufficient thickness to act as an electrical
insulator." Further, the brief contends that since the Burroughs
Interference No. 103,036
This section of the brief relies on proposed findings of fact40
(266) to (270).
The party Cataldi et al. relies on its proposed finding of41
fact no. (271). This proposed finding relies upon Dr. Powers'
testimony at BR 511 to 516, wherein Dr. Powers testified that the
terms, conductive means and conductive layer, meant electrically
conductive.
The party Cataldi et al. relies on its proposed finding of42
fact no. (273).
-31-
et al. specification makes no mention of thermal insulator, then
none was intended.
Further, on page 98 of its opening brief, the party40
Cataldi et al. urges that on cross-examination Dr. Powers
admitted that both Kiernan et al., U. S. Patent No. 4,723,656 and
Parker, U. S. Patent No. 4,737,020 disclose a layer that
functions as an electrical insulator and as a thermal conductor.
In addition, the party Cataldi et al. argues at page 98 of its
brief that Dr. Powers admitted that the term, conductive, was
used in the party Burroughs et al.'s specification only in the
electrical sense, that Dr. Powers could not explain why he41
understood the word conductor to refer to electrical and thermal
properties, and that Dr. Powers admitted that no specific
materials were disclosed for layers 30 and 32.42
Interference No. 103,036
-32-
The Party Burroughs et al.'s Position
The party Burroughs et al. relies upon the following
testimony by Dr. Powers.
16. I have reviewed in particular
the embodiment of the battery strength
indicator shown in Fig. 10 of the Burroughs
'544 patent and described in the
specification in column 4, lines 21-38 and
column 8, line 26 through column 9, line 3.
As described therein, first and second
nonconductive strips or layers 30 and 32 are
applied to the side of the battery housing as
in Fig. 2. Sandwiched between the
nonconductive layers is a conductive layer 64
which has a reduced cross sectional area 65
in a sealed chamber or indicator zone 66. In
contact with the conductive layer is either a
color indicating heat sensitive material 70,
a pyrotechnic chemical 68, or the color
indicating heat sensitive material in
combination with the pyrotechnic chemical.
When this embodiment of the battery strength
indicator is electrically connected across
the terminals of the battery, current flows
through the conductive layer 64. Because the
conductive layer is reduced to a small cross
section 65 in the indicator zone 66, the
resistance of which is selected such that
current flow at a minimum predetermined
voltage will raise the area 65 to a
predetermined temperature, the heat generated
by the conductive layer raises the
temperature of the color indicating heat
sensitive material to a predetermined
temperature for color change to indicate the
voltage or strength of the battery.
17. The insulative or non-
conductive layers described in the Burroughs
'544 patent are present to shield components
of the strength indicator which transmit heat
and/or electricity, and are indicated as
doing so. For example, in the indicator
Interference No. 103,036
-33-
device 10D shown in Fig. 10, nonconductive
layers 30 and 32 (attached to the side of the
battery housing) surround the "color
indicating, heat sensitive material 70 which
undergoes a visible color change when the
material is heated to at least a pre-
determined temperature" (column 8, lines
37-41). In order for this embodiment to be
operable when applied to the side of a dry
cell battery, the construction of the battery
strength indicator, including the non-
conductive layers, must be such to permit
sufficient heat generated by the reduced
cross section conductive area 65 to flow to
the color indicator material to cause a color
change. Heat generated by the reduced
section conductive area 65 is within the
sealed chamber or zone 66 adjacent to
nonconductive layers 30 and 32, and will
naturally desire to flow in all directions
from reduced cross sectional conductive area
65, unless somehow constrained. In this
instance, the clear function of nonconductive
layers 30 and 32 is with regard to heat flow
to ensure that the heat generated by the
reduced conductive layer 65 is able to raise
the temperature of the color indicating, heat
sensitive material 70. The only way this can
be accomplished is if layers 30 and 32 are
thermally nonconductive. It would be
illogical for anyone of ordinary skill in
this art to understand that "nonconductive”
layers 30 and 32 are somehow thermally
conductive, since this would cause heat to
flow away from color indicating, heat
sensitive material 70 and would not permit
material 70 to receive heat to undergo a
visible color change to indicate the
remaining strength of the battery, as is
described. Likewise, in order for the
current to be able to flow through conductive
layer 64, "nonconductive" layers 30 and 32
must also be electrically nonconductive, or
else the device would short circuit.
Interference No. 103,036
-34-
18. Additionally, the portion of
the chamber, cell or bubble below the
conductive layer and the air pocket (see
Sections I.A. and I.F.) are inherently
thermal insulative and independently provide
adequate support to provide adequate support
[sic] for the thermal insulation limitation.
As such, it is the natural result of such
construction that the nonconductive layer (30
or 32) adjacent to the battery housing, along
with any portion of the sealed chamber or
zone 66 beneath the conductive area 65, has
both sufficient electrical insulation to
prevent short circuiting and sufficient
thermal insulation to overcome heat sinking
when the battery strength indicator is in
contact with the battery housing. The
reference to repeated use of this embodiment
of the battery strength indicator at column
9, lines 1-3 also requires that heat sinking
to the battery housing be overcome by the
thermal insulation beneath the conductive
area 65 of layer 64.
19. In connection with the battery
housing, dry cell batteries of the type shown
in Fig. 2 of Burroughs et al. patent and
described elsewhere as nonrechargeable
alkaline batteries (column 11, line 42) or
zinc-carbon batteries (column 12, line 63)
all have electrically conductive housings.
In a case of alkaline dry cells, the side of
the housing is part of the cathode. In the
case of zinc-carbon batteries, the side of
the housing is part of the anode. Thus, I
believe that the Burroughs '544 patent
inherently discloses that the dry cell
battery housing is electrically conductive.
20. Fig. P-1 below is a side
elevational view of a thermal and electrical
model of the heat sensitive battery strength
indicator embodiment shown
Interference No. 103,036
-35-
in Fig. 10 of the '544 patent. While Fig.
P-1 does not appear in the ‘544 patent as
such, it is based entirely on the disclosure
of the Burroughs ‘544 patent, and is intended
to show the relative positions of the various
components and the actual flow of heat and
current as described in the patent.
The relative positions of the features of
Fig. P-1 are supported by the '544 patent
specification as follows, with the feature
numbers shown bold in brackets corresponding
to those shown in Fig. 10. Specifically, at
column 4, lines 21-38, the specification
states:
[T]he battery strength
indicator means comprises: (a) a
first nonconductive layer [30]; (b)
a second nonconductive layer [32]
attached to the first nonconductive
layer, a portion of the first and
second nonconductive layers forming
a chamber [66] therebetween; (c) a
conductive layer [64] sandwiched
Interference No. 103,036
-36-
between said first and second
nonconductive layers, the
conductive layer reduced to a small
cross-sectional area [65] in the
chamber; and (d) a heat sensitive
color indicating material [70] in
said sealed chamber that is adapted
to undergo a color change when its
temperature exceeds or crosses a
predetermined value, said
conductive layer in the chamber
rising to a predetermined
temperature when the voltage of the
current flowing therethrough
exceeds a predetermined value.
The battery strength indicator is attached to
the side of a dry cell battery [18] in
accordance with Fig. 2 and the disclosure at
column 6, lines 15-29. The housings of both
the nonrechargeable alkaline and zinc-carbon
dry cell batteries disclosed in the '544
patent at column 11, line 42 and column 12,
line 63 are electrically conductive. The
heat sensitive color indicating material [70]
is above the conductive layer reduced area in
the sealed chamber in accordance with the top
plan view shown in Fig. 10. Pyrotechnic
chemical 68 is not shown in accordance with
the alternate embodiment disclosed at column
8, lines 62-66. The current and heat flow as
shown in Fig. P-1 above are disclosed at
column 8, lines 45-54 and 62-66.
21. In my opinion, the current and
heat flow model shown in Fig. P-1 is the
necessary and only reasonable construction
which one of ordinary skill in the battery
art would give to this embodiment of the
strength or voltage indicator disclosed in
the Burroughs '544 patent. As I believe
would be recognized by one of ordinary skill
in the battery art, nonconductive layers 30
and 32 would be inherently recognized as
having both sufficient thermal
nonconductivity and sufficient electrical
Interference No. 103,036
-37-
nonconductivity to permit the heat and
current flow to make the device operable,
since the absence of either would make the
device inoperable. Further, in my opinion,
the natural result flowing from this
embodiment of the strength or voltage
indicator disclosed in the Burroughs '544
patent, which one of ordinary skill in the
battery art would recognize, is that the
conductive layer has sufficient thermal
insulating means under its surface to
overcome heat sinking when the device is in
contact with an electrically conductive
portion of the battery housing.
22. Consistent with the above,
nowhere in the Burroughs '544 patent is the
term "nonconductive layer" specifically
limited to electrically nonconductive
materials, nor is it disclosed as being
thermally conductive. It is my opinion that
a person of ordinary skill in the art
pertaining to battery design and
construction, when reading the Burroughs '544
patent, would understand that, at least in
connection with the embodiment of the battery
strength indicator depicted in Fig. 10, the
term "nonconductive layer" refers to both
thermally and electrically nonconductive.
This would be inherently understood because
of the fact that both controlled heat flow
and controlled current flow are discussed.
For the strength indicator to operate as
described, one would require thermal
insulation in order for the heat from the
reduced section area 65 to flow to the heat
sensitive material 70, as well as electrical
insulation in order to prevent the current
flowing through conductive layer 64 and
reduced section 65 to short circuit against
the battery housing.
23. In some specific instances
described in the Burroughs '544 patent, the
Interference No. 103,036
-38-
nonconductive layers are described with
regard to their electrically nonconductive
function. For example, in the indicator
device 10F shown in Fig. 15, nonconductive
layer 30 is described as having a "high
dielectric constant" so as to be able to
control the electric field generated across
cell 12 by electrodes 62a and 62b. In my
opinion, this does not contradict the
inherent and explicit disclosure of the
capabilities of the nonconductive layers 30
and 32 in controlling heat flow in connection
with the Fig. 10 embodiment, but merely makes
reference to their concurrent dielectric
properties in the Fig. 15 embodiment.
24. My opinion is supported by the
various dictionaries that I have consulted,
including the Dictionary of Physics, which
define the term "conductor" or "conductive"
as including both thermal conductivity and
electrical conductivity. As such, the
opposite term "nonconductive" would
necessarily encompass both thermal insulation
and electrical insulation properties, unless
specifically limited to one or the other. My
opinion of the nature and understanding of
the term "nonconductive" in connection with
layers 30 and 32 is supported by my
experience that the vast majority of
nonconductive materials display both thermal
and electrical insulating properties. It is
my opinion that a person having ordinary
skill in the art relating to battery design
and construction would necessarily select a
nonconductive material which would have both
thermal insulating and electrical insulating
properties, without undue experimentation. I
am aware of one exception, diamond, which is
a good electrical nonconductor while also
being a good thermal conductor. I believe
that it would be illogical, if not absurd,
that anyone of ordinary skill in the art
reading the '544 patent would somehow
understand that the nonconductive layers,
Interference No. 103,036
-39-
attached to a disposable battery, would be
constructed of diamond, so as to be thermally
conductive and electrically insulative.
Also, the party Burroughs et al. relies upon
Dr. Powers' testimony at BR 63 and 64. Dr. Powers testified that
he had performed an experiment to determine the operability of a
heat sensitive battery strength or voltage indicator on the side
of a battery without special precautions taken to prevent heat
sinking from the conductive layer to the conductive battery
housing. In the experiment he used a strip tester as described
in the Parker '020 patent and Kiernan patent and found that heat
sinking is not a problem.
In addition, the party Burroughs et al. relies upon the
testimony of Dr. Alan Salkind, one of the party Cataldi et al.'s
witnesses called by the party Wang et al.; Dr. Feder, an expert
testifying on behalf of the party Cataldi et al.; and
Mr. Patrick D. Hein, a witness for the party Cataldi et al.
Dr. Salkind testified that he presumed that the
nonconductive layer is both thermally nonconductive as well as
electrically nonconductive. BR 2903. Dr. Feder testified with
respect to (Burroughs et al. Exhibit 5 (BX 5)), which is directly
analogous to the thermal battery strength indicator described in
the Burroughs et al. patent, that nonconductive would normally
Interference No. 103,036
-40-
mean either electrically or thermally nonconductive. BR 3938 to
3939.
Mr. Patrick D. Hein testified on the problem of heat
sinking when a battery strength or voltage indicator is attached
to a battery. CR 1075 to 1081. Mr. Hein testified that he
tested various materials and found that group III materials (ten
thin synthetic polymeric films having thicknesses ranging from
0.001 to 0.005 inches) had severe heat sinking problems. CR
1077, 1078, 1080 and 1081.
With respect to the heat sinking problem in the context
of this interference, Mr. Hein testified at CR 1143 that heat
sinking creates difficulties, i.e., it decreases the observed
temperature profile on the battery tester/voltmeter when it is in
proximity to a battery container, thus displaying inaccurate or
incorrect readings when the tester mechanism is activated.
Mr. Hein explained at CR 1194:
In the case of a fresh cell with the
temperature profiles that we exhibited, for
an example, it [the fresh cell] might show
that it had only three-quarters of available
power, when, in effect, it was the fresh cell
that had 100 percent available power.
However, Mr. Hein acknowledged at CR 1195 that one could get an
accurate good/bad type reading if the tester mechanism was
properly designed. He also testified at CR 1195 and 1196:
Interference No. 103,036
-41-
Q. Now, within the context of the type of
tester that was applied in the batteries in
your declaration where there is a scale,
could one compensate by condensing the scale
of the sensor to compensate for some
heatsinking effects?
A. I don't understand what you mean by
compensating the scale or condensing the
scale. Can you clarify that?
Q. If one were to reduce the scale of the
sensor so that it was measuring less of a
difference from the lowest level to the
highest level, could such a reduced scale of
sensor compensate for the heatsinking effects
that you talk about with regard to the second
group of materials?
A. If I understand the intent of your
question, you're looking at condensing the
scale to make it more like a -- just an
on/off, good/bad, one or the other?
Q. It's going in that direction, yes.
A. The device could be designed that way if
you so desired it to work that way. I don't
think that there's a practical use if the
scale would be condensed, but that's my
opinion.
Q. What are other variables that would
affect the reading on the thermal indicator
that your tested? For example, would the
electrical resistance of the heating element
have an effect?
A. The electrical resistance of the heating
element, the design of the taper of the
element itself creating the -- controlling
the current flow through the resistive -- or
the conductive element of the tester, that
will have an effect.
Interference No. 103,036
-42-
The color changing point of the
thermochromic material will have an effect on
the overall design of the tester mechanism.
Those are the two biggest factors in regards
to the tester mechanism itself.
Q. Will the thickness of the insulation also
have an effect?
A. Yes.
As explained by the party Burroughs et al. on pages 132
and 133 of its opposition brief,
In the heat sensitive indicator
embodiment of Fig. 10 (summarized at column
4, lines 21-38 and described further at
column 8, line 26 through column 9, line 3),
nonconductive layers 30 and 32 are located
above and below the conductive layer 64 and
the reduced cross section area 65 in
indicator zone 66. Heat generated by the
current through the reduced cross section
area 65 of the conductive layer is described
as raising the temperature of color
indicating, heat sensitive material 70 to
cause material 70 to undergo a visible color
change when the battery has a predetermined
minimum voltage output. The indicator device
shown would not function without shielding
provided by some type of nonconductive
(either electrically or thermally) layer if
applied to an electrically conductive portion
of a dry cell battery housing as described.
The natural result of the use of the
nonconductive layer 30 or 32 below the
conductive layer 64 and reduced area 65 is to
permit the heat generated by the conductive
layer to change the color of the temperature
sensitive color indicator material and
indicate voltage when the voltage indicator
is in contact with the battery housing.
Interference No. 103,036
-43-
Opinion re: item (5)
After having considered the evidence and the arguments
of the parties, we are persuaded by the party Burroughs et al.
that its patent specification adequately discloses the
limitation, "sufficient means under one of its [the conductive
layer's] surfaces to permit the heat generated" by the conductive
layer to change the color of the temperature sensitive color
indicator, that this limitation is supported by, and does not
require, a finding of thermal insulation in the lower
nonconductive layer 30 or 32, and that the limitation is
supported by the electrical insulation of the nonconductive
layer.
In our view, the battery strength indicator disclosed
in Figure 10 and described at column 8, line 26 to column 9, line
3, of the Burroughs et al. patent is presumed to be operative.
In re Jacobs, 318 F.2d 743, 745-46, 137 USPQ 888, 889 (CCPA 1963)
and Field v. Knowles, 183 F.2d 593, 600-01, 86 USPQ 373, 378-79
(CCPA 1950). The party Cataldi et al. has not sustained its
burden to show that the indicator of Figure 10 cannot be made to
operate for any practical or useful purpose by such changes and
alterations, short of invention, which one skilled in the art
would be capable of applying in constructing the indicator with
the disclosure of the Burroughs et al. specification and its
Interference No. 103,036
-44-
figures as his guide. Consequently, we agree with the party
Burroughs et al. that since its patent discloses and claims the
particular embodiment of the temperature sensitive voltage
indicator over a nonconductive layer attached to the side of a
battery, this embodiment must be presumed to be operative, i.e.,
the lower nonconductive layer must inherently have sufficient
thermal insulating means to overcome heat sinking when the
voltmeter is in contact with a battery having an electrically
conducting housing. Furthermore, the Burroughs et al. specifi-
cation is sufficient to show that the natural result flowing from
the operation of the device of Figure 10 is to permit the heat
generated by the conductive layer to change the color of the
temperature sensitive color indicator material. See Hansgirg v.
Kemmer, 102 F.2d 212, 40 USPQ 665 (CCPA 1939) and In re Reynolds,
443 F.2d 384, 389, 170 USPQ 94, 98 (CCPA 1971). In In re
Reynolds, 443 F.2d 384, 389, 170 USPQ 94, 98, the court resolved
an issue of inherent disclosure in an analogous case ("means for
preventing an abrupt change in the capacitance . . .") in favor
of an applicant by the disclosure of the drawing and the
knowledge that a person skilled in the art would suspect that
there was some reason for the relationships shown in the drawing
and would not regard such disclosure as accidental or arbitrary.
The Court also quoted with approval Technicon Instruments Corp.
Interference No. 103,036
-45-
v. Coleman Instruments, Inc., 255 F. Supp. 630, 150 USPQ 227
(N.D. Ill. 1966), aff'd 385 F.2d 391, 155 USPQ 369 (7th Cir.
1967):
By disclosing in a patent application a
device that inherently performs a function,
operates according to a theory, or has an
advantage, a patent applicant necessarily
discloses that function, theory or advantage
even though he says nothing concerning it.
In In re Smythe, 480 F.2d 1376, 1385, 178 USPQ 279, 285-286 (CCPA
1973), the court stated that the forgoing principle applies to
the description requirement under 35 U.S.C. § 112.
That the Burroughs et al. specification contains a
sufficient disclosure is also consistent with the testimony of
experts relied by the opposing parties.
Both Drs. Feder and Salkind, witnesses under the
control of the party Cataldi et al., testified that the term
nonconductive meant thermally nonconductive or electrically
nonconductive.
Mr. Hein, a witness for the party Cataldi et al.,
testified at CR 1195 that if a tester mechanism (a battery
voltage indicator) were properly designed one could avoid a heat
sinking problem and obtain an accurate good/bad type reading.
Such design alterations would include reducing the scale of the
sensor to compensate for heat sinking, varying the resistance of
the heating element, or the taper of the element to control the
Interference No. 103,036
-46-
current flow, or varying the thickness of the nonconductive
layer. Mr. Hein's testimony makes clear that the battery tester
of Burroughs et al.'s Figure 10 would operate in a crude manner,
giving good/bad readings for a battery to be tested. This is
sufficient to show that the device of Figure 10 is operative,
since it is settled that a commercial performance is not
necessary in order to have an operative disclosure. Field v.
Knowles, 86 USPQ 378-379.
We have also reviewed the decisions of Ex parte Parks,
39 USPQ at 1234, and Schriber-Schroth Co. v. Cleveland Trust Co.,
305 U.S. at 47, 39 USPQ at 242, which are relied upon by the
party Cataldi et al. These decisions are not apposite to the
situation here.
In Parks, the invention was to a method in which the
prior art normally used a catalyst and the lack of mention of a
catalyst in the Parks specification conveyed to persons of
ordinary skill in the art the limitation of "in the absence of a
catalyst." Likewise, in the Burroughs et al. patent, the
particular structure of the nonconductive layer provides adequate
support to convey to one of ordinary skill in the art possession
of the concept of "sufficient means under one of its [the
conductive layer's] surfaces to permit the heat generated" by the
conductive layer to change the color of the temperature sensitive
Interference No. 103,036
-47-
color indicator as required by the claims. Contrary to the party
Cataldi et al.'s arguments, the Burroughs et al. specification
does not cry out for the specific term thermal in view of the
fact that the structure disclosed under the conductive layer
permits the operation of the heat sensitive voltage or strength
indicator. The containment and control of heat flow is
specifically described between "nonconductive" layers 30 and 32
in connection with the embodiment shown in Figure 10. The
concept of thermal insulation is inherent in, and the natural
result of, the structure, features and operation of the heat
sensitive indicator disclosed in the Burroughs et al. patent.
In Schriber-Schroth, the patentee was attempting to
justify support for a “flexible web" element in the face of his
specification which described the webs as extremely rigid. The
court found that an inherency argument could not fly in the face
of the description of the web having the antithetical quality of
rigidity. On the other hand, the Burroughs et al. specification
describes the properties of the lower conductive layer which are
fully consistent with the concept of thermal insulation.
We have also reviewed the testimony of Dr. Powers,
which is relied upon by the party Cataldi et al. as an admission
that the term, conductive, throughout the Burroughs et al.
specification is used in the electrical sense. Although
Dr. Powers acknowledged that conductive is used in the electrical
Interference No. 103,036
-48-
sense, that does not constitute an admission that nonconductive
does not mean thermally nonconductive. We are not persuaded that
Dr. Powers admitted that the nonconductive layer of the device of
Figure 10 is thermally conductive.
We have given weight to Dr. Powers’ testimony and find
his testimony credible, since it is consistent with the testimony
adduced from witnesses associated with the opposing parties. To
the extent the party Cataldi et al. urges that Dr. Powers’
testimony is not credible, because he could not determine whether
Figure 10 of the Burroughs et al. patent was a top view or a side
view (see our decision on item 1, supra), he accurately depicted
his figure P-1, at paragraph 20, as a side view.
Consequently, we hold that the Burroughs et al.
specification contains a written description for the limitation,
"sufficient means under one of its [the conductive layer's]
surfaces to permit the heat generated" by the conductive layer to
change the color of the temperature sensitive color indicator, of
reissue claims 16, 18 to 20, 22 and 23. For the foregoing
reasons, the motion is denied as to item 5.
In item 6, the motion urges that the Burroughs et al.
specification does not contain a written description for the
limitation, "means between the conductive layer and the battery
housing to permit" the heat generated by the conductive layer to
change the color of the temperature sensitive color indicator
Interference No. 103,036
-49-
material and indicate voltage of reissue claims 24 to 29. The
motion relies upon the testimony of Dr. Feder at CR 53 to 57 and
64. Dr. Feder testified that the Burroughs et al. specification
does not disclose means between the conductive layer and the
battery which performs a thermal insulating function to allow
heat generated by the conductive layer to sufficiently heat the
heat-sensitive color indicator material.
As we noted in our decision on item 5, supra, the
Burroughs et al. specification is sufficient to show that the
natural result flowing from the operation of Figure 10 is to
permit the heat generated by the conductive layer to change the
color of the temperature sensitive color indicator material.
Accordingly, for the reasons given in item 5, supra, the motion
is denied as to item 6.
In item 7, the motion urges that the Burroughs et al.
specification does not contain a written description for the “air
pocket" limitation of reissue claims 30 to 32 and 40. The motion
relies upon the testimony of Dr. Feder at CR 65 and 66. With
respect to claims 30 to 32, Feder testified that the Burroughs et
al. specification does not disclose an air pocket as a part of
the temperature sensitive color indicator, the indicator device
10D of Figure 10, but rather discloses the air pocket as being
Interference No. 103,036
-50-
associated with the electrical switch. Moreover, the party
Cataldi et al.'s opening brief states at page 101 that on cross-
examination, “Dr. Powers admitted that the party Burroughs et
al.'s specification did not support the 'air pocket'
recitations." With respect to claim 40, which recites that the
"insulating means is an air pocket under the dielectric substrate
under the area of the conductive layer," Dr. Feder testified that
the concept of an air pocket as a part of thermal insulating
means is not taught by the Burroughs et al. specification. The
motion is denied with respect to item 7.
We have reviewed the testimony of Dr. Powers, referred
to in Sections 294 and 295 of the party Cataldi et al.'s proposed
findings of fact, and do not agree with the party Cataldi et al.
that Dr. Powers admitted at BR 177 to 179 that the Burroughs et
al. specification lacked support for the air pocket being a part
of the temperature sensitive color indicator. A fair reading of
the testimony shows that Dr. Powers is of the view that the
Burroughs et al. specification has inherent support for the air
pocket being a part of the temperature sensitive color indicator.
As we found in item 2, supra, the Burroughs et al. specification
contains a sufficient written description for the indicator
device being in the shape of a chamber, cell or bubble. Because
of this shape, we necessarily agree with the party Burroughs et
al. that the chamber, cell or bubble would also contain an air
Interference No. 103,036
-51-
pocket, especially where the specification does not teach that
the chamber, cell or bubble is formed under a vacuum. One
skilled in the art would appreciate that air must be present in
the chamber, cell, or bubble because of its manufacture at
standard conditions (temperature and pressure) and that the air
pocket in the chamber, cell, or bubble of the device 10D would
also supply some thermal insulation. Accordingly, we hold that
the Burroughs specification contains a sufficient written
description within the meaning of 35 U.S.C. § 112, first
paragraph, for the "air pocket" limitation of reissue claims 30
to 32 and 40.
For the foregoing reasons, the motion is denied as to
item 7.
In item 8, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"thermal insulation" limitation of reissue claims 33 to 40 and 43
to 49. Since claims 34 and 38 were canceled, this item will be
treated as to claims 33, 35 to 37, 39, 40 and 43 to 49. The
motion relies upon the testimony of Dr. Feder at CR 66 to 68.
The motion is denied for the reasons set forth above with respect
to items 5 and 6, supra.
In item 9, the motion urges that the Burroughs et al.
specification does not contain a written description for the
“label" limitation of reissue claims 33 to 40, and 43. Since
Interference No. 103,036
-52-
claims 34 and 38 were canceled, this item will be considered as
to claims 33, 35 to 37, 39, 40 and 43. Independent claim 33
recites "[a] label comprising an integral battery voltmeter."
Independent claim 37 recites "[a] battery having a label with an
integral voltmeter." The motion relies upon the testimony of
Dr. Feder at CR 68 to 70, who testified that Burroughs et al.'s
Figure 2 shows the interrelationship between the battery 18 and
the indicator device 10, that the specification states that the
figure depicts a battery having a battery strength indicator and
that the figure shows no thickness for the indicator device.
Dr. Feder testified that since thickness is intimately related to
the heat transport between the device and the battery, the lack
of thickness emphasizes the fact that Burroughs et al.'s
specification does not teach the need for thermal insulation and
that nothing in Figure 2 or in the description thereof
corresponds to a label. We disagree.
Figures 1 and 2 are as follows:
Interference No. 103,036
-53-
The Burroughs et al. specification reads at column 6,
lines 4 to 29 as follows:
Referring to FIG 1, a battery-strength
indicator device 10 of the present invention
is illustrated. The indicator device has an
indicator chamber, cell or bubble 12 formed
in strip 16. Preferably the cells of the
present invention are sealed cells. Conduc-
tive layers 14 run the length of the strip
into the indicator bubble to form spaced
apart electrodes. The indicator bubble
contains an indicating material 17 which
undergoes a visible change when the voltage
potential across the indicator cell exceeds a
predetermined value. At least one side of
the strip 16 is transparent or translucent.
The improved battery 18 of the
present invention is illustrated in FIG. 2.
The battery has an anode 20 and a cathode at
its base (not shown). The indicator device
10 is attached to the side of the battery,
with the ends of the device connected to the
anode 20 and the cathode. If the device is a
constant-drain device, that is, the device is
on continuously, the indicator cell undergoes
a visible change when the output voltage of
the battery drops below a predetermined
value. In an alternative embodiment, the
battery has the indicator device of FIG. 1A,
which includes a strip 16, conductive leads
14, an indicator cell 12, and a switch 24.
The switch is biased to be in an off
position, and, thus the indicator device is
only actuated when the switch is on, thus
preventing a constant drain on the battery.
Dr. Powers acknowledged that the term, "label," is not
disclosed in the Burroughs et al. specification.
In this regard, Dr. Powers testified that . . .
the tester is integral with the battery and
to be usable it has to be on the outside of
Interference No. 103,036
-54-
the battery. You can't see it inside the
battery; and, therefore, it would have to
constitute part of the label if there's a
label on the battery. [BR 149]
* * * *
Q. Can you tell me that support for a battery
having a label -- let me rephrase that. For
the element a battery having a label, can you
tell me what support you have for your belief
that it is sufficiently disclosed to enable a
person skilled in the art to make and use the
battery having a label?
A. I can only say I don't know why you make
and use it unless you put it on the label as
part of the label. [BR 150]
* * * *
Q. Can you provide for me the support in the
specification in the '544 patent for your
belief that the patent discloses -- adequately
discloses how to make a label with an integral
voltmeter?
Mr. Peterson: Including the drawings again.
Mr. Esatto: Including the drawings.
The Witness: My conclusion is based on the
fact that time and time again the patent
teaches that the voltmeter is integral with
the battery and I believe it is mentioned --
here with the housing. The only way it can
be integral with the battery and be usable
technically is if it is on a portion of the
label. That's just common sense. [BR 153]
To comply with the written description requirement of
35 U.S.C. § 112, first paragraph, it is not necessary that the
application describe the claimed invention in ipsis verbis, In re
Lukach, 442 F.2d at 967, 169 USPQ at 796 (CCPA 1971); all that is
Interference No. 103,036
-55-
required is that it reasonably convey to persons skilled in the
art that, as of the filing date thereof, the inventor had
possession of the subject matter later claimed by him. In re
Driscoll, 562 F.2d at 1245, 195 USPQ at 434 (CCPA 1977). Thus,
Dr. Powers' acknowledgment that the term, "label," is not
disclosed in the Burroughs et al. specification does not mean
that the Burroughs et al. specification does not reasonably
convey to persons skilled in the art that the Burroughs et al.
inventors did not have possession of the label limitation of
claims 33 to 40, and 43.
We agree with the party Burroughs et al.'s opposition
brief, pages 143 and 144, that in common usage one of ordinary
skill in the art would understand that the term "label," as
defined in Webster’s Third New International Dictionary (1964
Edition) (BX 18), refers to something affixed to the surface of
an article, usually a layer, to provide information concerning
the article. The Burroughs et al. specification, column 6, lines
4 to 29, refers to a strip which is attached to the side of a
battery 18 (Fig. 2) and which contains an indicator chamber cell
or bubble formed in the strip, i.e., an indicator device. Since
this strip containing the indicator device is designed to
indicate the strength of the battery and provide such information
to the user, the strip 12 fully and adequately discloses a
Interference No. 103,036
-56-
"label" and the "label with an integral voltmeter." For this
reason, we find the testimony of Dr. Powers to be credible where
he urges that the battery indicator device which is carried on
strip 12 constitutes a label. Accordingly, the motion is denied
with respect to this limitation.
In item 10, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"thermochromic inks," "thermochromic tapes," and "crystalline
materials" limitations of reissue claims 41 and 48. The motion
relies upon the testimony of Dr. Feder at CR 70 to 72, who
testified that Burroughs et al.'s specification does not disclose
or suggest thermochromic inks or thermochromic tapes and using
thermochromic ink in a voltage indicator device. Dr. Feder
testified that the specification discloses using liquid
crystalline materials not in an indicator device 10D but in
embodiments that use voltage sensitive liquid indicator material
and that have the indicator chamber, cell, or bubble that is used
to hold the voltage sensitive liquid indicator material. The
motion is denied.
We agree with the party Burroughs et al.'s opposition
brief, pages 144 and 145, that the Burroughs et al. specification
has sufficient written description for the foregoing limitations.
Burroughs et al., column 6, lines 56 and 57, broadly disclose
Interference No. 103,036
-57-
that the indicator material "composition can be a liquid crystal
composition." There is no limitation that this composition is
used only for voltage sensitive indicator embodiments.
We agree with the party Burroughs et al.'s opposition
brief, page 145, that the Burroughs et al. specification has
sufficient written description for thermochromic. Thermochromic
is defined in Webster's Third New International Dictionary (1964
Edition) (BX 18) as exhibiting thermochroism and thermochroism is
defined as the phenomenon of reversible change of color of a
substance with change of temperature. As such, thermochromic
material is adequately supported by the disclosure in column 8,
lines 66 to 68, of a color indicating, heat sensitive material
which undergoes a nonpermanent color change when exposed to a
predetermined temperature. The term, "thermochromic tapes," is
equivalent to the strip or layer embodiments of the color
indicating heat sensitive material as disclosed in column 8,
lines 59 to 62, and column 11, lines 21 to 23.
For the foregoing reasons, the motion is denied as to
item 10.
In item 11, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"color to colorless," "colorless to color," and "one color to a
second color" limitations, which are present in reissue claims
Interference No. 103,036
-58-
32, 42, and 49. The motion relies upon the testimony of
Dr. Feder at CR 72 and 73, who testified that Burroughs et al.'s
specification, column 6, lines 48 to 52, only discloses that:
The indicator material can be any
material that will undergo a visible change,
such as a color change, when the voltage
potential across the electrodes exceeds or
drops below a predetermined voltage.
According to Dr. Feder, the foregoing recitation does not
disclose colorless indicator materials or transitions from color
to colorless or colorless to color for indicator materials.
Further, Dr. Feder testified that the foregoing recitation is
directed to those types of indicator materials which are voltage
sensitive color indicator materials, not to heat sensitive color
indicator materials. The motion is denied as to this item.
We agree with the party Burroughs et al.'s opposition
brief, pages 146 and 147 that the Burroughs et al. specification
has sufficient written description for the foregoing limitations.
As noted by the party Cataldi et al., Burroughs et al., column 6,
lines 48 to 52, disclose that the indicator material can be any
material that will undergo a visible change, such as a color
change. Burroughs et al., column 8, lines 59 to 62, teaches that
one of the strips is made of a material that is sensitive to
temperature and will undergo a visible change when the
temperature exceeds a predetermined value. The term, "color
Interference No. 103,036
-59-
change," is a generic expression which embraces three
embodiments, "color to colorless," "colorless to color," and "one
color to a second color." Since the three embodiments are not
patentably distinct from each other, the generic expression
"color change" is considered to constitute a sufficient written
description of the three embodiments. Cf. Bigham v. Godfredsen,
857 F.2d 1415, 1417, 8 USPQ2d 1266, 1268 (Fed. Cir. 1988) ("The
generic term 'halogen' comprehends a limited number of species,
and ordinarily constitutes a sufficient written description of
the common halogen species provided that there is no patentable
distinction among them.").
In item 12, the motion urges that the Burroughs et al.
specification does not contain a written description for the
“temperature insulating material" and the "thermal insulation
material" limitations of reissue claims 39 and 46. The motion is
denied for the reasons set forth above in the denial of items 5,
6, and 8, supra.
In item 13, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"stand-offs" limitation of reissue claim 47, i.e., "the means to
provide thermal insulation comprises standoffs on the dielectric
layer adjacent the battery can, wherein the standoffs, the
dielectric layer, and the battery can define an air pocket." The
Interference No. 103,036
-60-
motion relies upon the testimony of Dr. Feder at CR 74 and 75,
who testified that Burroughs et al.'s specification does not
disclose a structure which has standoffs on a dielectric layer
that are adjacent to a battery can. The motion is granted as to
this item.
We agree with the party Cataldi et al. that the
Burroughs specification does not contain a written description
for the limitation, "the standoffs, the dielectric layer, and the
battery can define an air pocket," as recited in claim 47. The
Dictionary of Scientific and Technical Terms 1528 (2d ed.,
McGraw-Hill Inc., 1978) (Cataldi et al. Exhibit No. 68 (CX 68))
defines a stand off insulator as "an insulator used to support a
conductor at a distance from the surface on which the insulator
is mounted." This definition is consistent with Dr. Powers'
testimony at BR 45 that a standoff is a structure which separates
the conductive layer from the battery to form an air pocket. We
reject the party Burroughs et al.'s argument that their chamber,
cell or bubble below the conductive layer constitutes a standoff
within the meaning of claim 47. While the air pocket may act as
an insulating means, the air pocket is not formed by the
standoffs, the dielectric layer, and the battery can as recited
in claim 47. Accordingly, the motion is granted as to item 13.
Interference No. 103,036
-61-
In item 14, the motion urges that the Burroughs et al.
specification does not contain a written description for the
“coupling means" limitation of reissue claim 50. The motion
relies upon Dr. Feder's testimony at CR 75 to 77 to show a lack
of written description. The motion is granted as to this item.
In our decision on the party Cataldi et al.'s motion
no. 2, supra, we held that this claim is indefinite. In so
holding, we agreed with the party Cataldi et al. that the term
“coupling means" is not defined in the Burroughs specification
and that the specification does not show any structure for the
coupling means. We rejected the party Burroughs et al.'s
argument that the structure is shown where the pyrotechnic
chemical is surrounded by the color indicating, heat sensitive
material or by the alternative embodiment where the device is
fabricated without the pyrotechnic chemical so that the heat
sensitive material contacts the conductive area. The coupling
means is not equivalent to the heat sensitive material contacting
the conductive area, because no interaction other than contacting
is specified.
In item 15, the motion urges that the Burroughs et al.
specification does not contain a written description for the
"means to transfer" limitation of reissue claim 51. The motion
relies upon Dr. Feder's testimony at CR 77 and 78 to show a lack
Interference No. 103,036
-62-
of written description. The motion is denied for the reasons set
forth above in the denial of items 5, 6, 8, and 12, supra.
In summation, the Cataldi et al. motion no. 3 is denied
with respect to the Burroughs et al. patent claims 1 to 11 and
reissue claims 13 to 16, 18 to 20, 22 to 30, 32, 33, 35 to 37, 39
to 46, 48, 49 and 51 and is granted with respect to the Burroughs
et al. reissue claims 17, 21, 31, 34, 38, 47 and 50. Judgment as
to these latter claims is deferred to the next final hearing,
since we do not enter a piecemeal judgment with respect to a
party.
Issue (5)
The party Cataldi et al.'s opening brief requests that
we decide whether the party Burroughs et al.'s reissue claims 1
to 51 are unpatentable on the ground of double patenting, as
urged in motion no. 23.
The motion is dismissed as to reissue claims 1 to 11.
37 CFR § 1.633(a) authorizes a party to file a preliminary motion
for judgment against an opponent's claim designated to correspond
to a count. Since reissue claims 1 to 11 have not been
designated to correspond to count 1, these claims are not a part
of the interfering subject matter. Perkins v. Kwon, 886 F.2d
325, 327, 12 USPQ2d 1308, 1310 (Fed. Cir. 1989) ("The
implementing rules provide not only for the threshold
determination under 37 C.F.R. § 1.603 or § 1.606 that the
Interference No. 103,036
-63-
interfering subject matter is patentable to both parties, but
that after an interference is declared a party may move for
judgment on the ground that the interfering subject matter is not
patentable to the opponent. 37 C.F.R. § 1.66(a).") Thus this
motion is clearly improper as to reissue claims 1 to 11.
Since we entered the party Burroughs et al.'s amendment
in our decision on Issue (3), supra, we will consider motion no.
23 as it relates to reissue claims 13 to 16, 18 to 20, 22 to 33,
35 to 37 and 39 to 51.
A copy of the motion appears at CR 1664 to 1670.
During ex parte prosecution of the party Burroughs et al.'s
reissue application, the examiner rejected the reissue claims on
the ground of obviousness-type double patenting over claims
pending in three later filed applications. In response to the
rejection, the party Burroughs et al. filed in accordance with
37 CFR § 1.321 terminal disclaimers in each of the three later
filed applications disclaiming the terminal portion of the term
of any patent granted on each of these later filed applications
subsequent to the expiration date of the party Burroughs et al.'s
involved U.S. Patent No. 5,015,544. In withdrawing the
rejection, the examiner stated, in part:
Since this [reissue] application, if matured
into a patent, cannot exceed the enforceable
term of the original patent, the term of any
patent issuing hereon cannot exceed the term
Interference No. 103,036
-64-
of any of the above named [three] applica-
tions. Therefore, a terminal Disclaimer
filed in the instant application would be
moot or otherwise unnecessary[,] as an
extension of monopoly is not possible. [CR
1667]
On page 3 [CR 1668] of its motion, the party Cataldi et al.
contends that the examiner was “simply wrong." The party Cataldi
et al. contends that terminal disclaimers accomplish two results.
They prevent a timewise extension of the patent property right
and “also avoid the possibility that, if two patents come into
different hands, third parties may be sued by both assignees for
the same activities." According to the party Cataldi et al., the
latter situation is not avoided in this case by the filing of
terminal disclaimers in the three later filed applications.
Rather, the examiner should have required the filing of a
reciprocal terminal disclaimer in the party Burroughs et al.'s
reissue application. This position is not well taken.
In response to a rejection of its reissue claims on the
ground of obviousness-type double patenting, the party Burroughs
et al. filed in accordance with 37 CFR § 1.321 terminal
disclaimers in each of its three later filed applications. The
examiner properly accepted the disclaimers and withdrew the
rejection. We know of no authority for requiring the party
Interference No. 103,036
On page 152 of its opposition brief, the party Burroughs et43
al. has offered to file such a reciprocal terminal disclaimer if
required.
-65-
Burroughs et al. to file a reciprocal terminal disclaimer in43
its involved reissue application. The party Cataldi et al.'s
fears appear to have been addressed by the examiner. If any of
the three later filed applications, if matured to patents, and
the involved reissue application becomes assigned to an assignee
other than that of the reissue application, the former will
become unenforceable by operation of law since the disclaimers
provide that any patent granted on any of the three later filed
applications shall be enforceable only for and during such period
that it and any patent granted on the involved reissue
application is commonly assigned. Under such a circumstance, it
does not appear possible that a suit by two different assignees
could reasonably be expected.
For the foregoing reasons, the motion is denied.
Issue (6)
The party Cataldi et al.'s opening brief requests that
we decide whether Burroughs et al.'s reissue claims 13 to 51 are
unpatentable for failure to comply with 35 U.S.C. § 251, as urged
in motion no. 24. Since we entered the party Burrough et al.'s
amendment in Issue (3), supra, we will consider motion no. 24 as
Interference No. 103,036
-66-
it relates to reissue claims 13 to 16, 18 to 20, 22 to 33, 35 to
37 and 39 to 51.
In the motion, the party Cataldi et al. urges at CR
1688 and 1689 that the party Burroughs et al.'s reissue claims 13
to 51 are not directed to the same invention as its original
patent claims 1 to 11, because the party Burroughs et al. never
alleged at the time of presentation of the reissue claims that
reissue claims 13 to 51 are drawn to the same invention as the
invention defined by its original claims 1 to 11. According to
the party Cataldi et al., the party Burroughs et al.'s silence is
an implicit admission that its newly presented claims 13 to 51
are not drawn to the same invention as the invention defined by
its original claims 1 to 11. The party Cataldi et al. also notes
that the involved Burroughs et al. reissue application contains
claims 1 to 12 and 52 to 63 which have been designated as not
corresponding to the count.
On pages 163 and 164 of its main brief, counsel for the
party Cataldi et al. states that the CCPA and the Court for
Appeals for the Federal Circuit have both "waffled back and
forth" on what was originally called the "intent to claim"
requirement of 35 U.S.C. § 251 and "what the Federal Circuit's
latest effort in this field tells us is now to be called the
'original patent' requirement" of the statute. In support of its
position, counsel cites two lines of cases (In re Weiler, 790
Interference No. 103,036
-67-
F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986) and In re Amos, 953 F.2d
613, 21 USPQ2d 1271 (Fed. Cir. 1991), which he cannot harmonize.
Despite this lack of harmonization, counsel urges that his motion
should be granted. The motion is denied.
As the moving party, the party Cataldi et al. has the
burden of proof by a preponderance of the evidence on the motion.
Kubota v. Shibuya, 999 F.2d at 519, n.2, 27 USPQ2d at 1420, n.2.
The party Cataldi et al. has not sustained its burden since the
motion does not analyze each of the reissue claims 13 to 51
vis-à-vis each of the original patent claims 1 to 11 to
demonstrate that each reissue claim is not directed to the same
invention as the original patent claims. See 37 CFR § 1.637(a).
Rather, the party Cataldi et al. relies upon the party Burroughs
et al.'s silence as an implicit admission that reissue claims 13
to 51 are not drawn to the same invention as patent claims 1 to
11. We find no admission under the foregoing circumstance.
Notwithstanding the foregoing, we have nonetheless
reviewed the party Burroughs et al.'s reissue claims and agree
with the party Burroughs et al. that these claims are drawn to
the same invention as the invention defined by its original
claims 1 to 11. In other words, the party Burroughs et al. is
not claiming subject matter entirely different from anything
anywhere earlier claimed, but rather is seeking to obtain
broadened claims to subject matter claimed in its patent.
Interference No. 103,036
-68-
Original patent claims 1 to 11 are directed to "[a]
battery having a battery strength indicating means to indicate
the strength of the battery." Independent reissue claims 13, 16,
20, 24, 30, 33, 37, 44, 50 and 51, respectively, are directed to
"[a] battery having a voltage indicator [to indicate the voltage
of the battery]," "[a]n article comprising an integral battery
voltage indicator [to indicate voltage]," "[a] battery having an
article with an integral voltage indicator [to indicate
voltage]," "[a] battery with an integral voltage indicator [to
indicate the voltage of the battery]," "[a] battery having a
voltmeter [to indicate the voltage of the battery]," "[a] label
comprising an integral battery voltmeter [to affect a change in
the temperature sensitive color indicator layer]," "[a] battery
having a label with an integral voltmeter [to affect a change in
the temperature sensitive color indicator layer]," "[a] battery
with an integral voltmeter [to affect a color change in the
temperature sensitive color indicator layer]," "[a]n article
comprising an integral battery voltage indicator [to affect a
change in the temperature sensitive color indicator material],"
and "[a] battery having an integral battery voltage indicator [to
affect a change in the temperature sensitive color indicator
material]."
In our view, the foregoing claims are all directed to
the same invention, a battery having an attached voltage
Interference No. 103,036
-69-
indicator to indicate the strength of the battery. Label claim
33 is directed to a subcombination of the combination recited in
claim 37 "[a] battery having a label."
For the foregoing reasons, motion no. 24 is denied.
Issue (7)
The party Cataldi et al.'s opening brief requests that
we decide whether Cataldi et al.'s proposed count 4 should be
substituted for count 1, as urged in motion no. 32.
The motion is dismissed as moot. Neither the party
Cataldi et al.'s preliminary statement with respect to count 1
nor its statement with respect to proposed count 4 overcomes the
filing date of the party Burroughs et al. Thus, a possible
substitution of proposed count 4 for count 1 would not forestall
the entry of judgment against the party Cataldi et al.
Patentability of the party Cataldi et al.'s reissue claims
Issues (9 to 11)
With respect to issue (9), the Burroughs et al. brief
no. 1 requests that we decide whether the party Cataldi et al.'s
reissue claims 9 to 13, 18 to 22, 28 to 32, 35, 37, and 39 are
unpatentable over the involved Burroughs et al. patent.
With respect to issue (10), the Burroughs et al. brief
no. 2 requests that we decide whether the party Cataldi et al.'s
patent claims 1 to 29 are unpatentable over the involved
Burroughs et al. patent.
Interference No. 103,036
-70-
With respect to issue (11), the Burroughs et al. brief
no. 4 requests that we decide whether judgment under 37 CFR
§ 1.662(b) should be issued against the party Cataldi et al. for
filing a second reissue application which cancels all of its
patent claims 1 to 29 which correspond to the count and which
asserts that the newly added reissue claims 30 to 44 are
patentably distinct from the original patent claims.
Since we are issuing judgment against the party Cataldi
et al. for the failure of its preliminary statement to overcome
the filing date of the senior party Burroughs et al., the party
Cataldi et al.'s patent claims 1 to 29 and its reissue claims 9
to 13, 18 to 22, 28 to 32, 35, 37, and 39 are considered
unpatentable. Since the party Cataldi et al. is not entitled to
its claims corresponding to the count pursuant to 35 U.S.C.
§ 102(g), it is not necessary for us to decide whether the claims
are also unpatentable over prior art or under 37 CFR § 1.662(b).
Accordingly, the issues raised in these briefs are dismissed as
moot.
JUDGMENT
Judgment with respect to the subject matter of the
count in issue is hereby entered against Richard T. Cataldi,
Patrick D. Hein, Henry J. Heirigs and John C. Leo, the junior
party. Accordingly, on the present record, the party Cataldi et
Interference No. 103,036
-71-
al. is not entitled to a patent containing its patent claims 9 to
29 and its reissue claims 9 to 25 and 28 to 40.
)
____________________________)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
____________________________) BOARD OF PATENT
RONALD H. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
____________________________)
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )

Application 07/730,712, filed July 16, 1991. Assignors to44
Duracell International Inc.
Application 07/641,394, filed January 15, 1991. Assignors45
to Eveready Battery Co., Inc., St. Louis, MO.
Application 07/504,504, filed April 4, 1990, now U.S. Patent46
No. 5,059,895, issued October 22, 1991. Assignors to Eastman Kodak
Co.
-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. 803
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
CHI-CHUNG WANG, TERRY C. EISENSMITH, CHARLES E. KIERNAN
AND ROBERT L. MILANESE
Junior Party,44
v.
GARY R. TUCHOLSKI
Junior Party,45
v.
RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (PATENT)
Junior Party,46
Interference No. 103,036
Reissue Application 07/942,973, filed September 10, 1992. 47
Accorded Benefit of U.S. Applications 07/504,504, filed April 4,
1990, and 5,059,895, issued October 22, 1991. Assignors to Eastman
Kodak Co.
Application 07/308,210, filed February 8, 1989, now U.S.48
Patent No. 5,015,544, issued May 14, 1991. Assignors to Strategic
Energy, Ltd.
Reissue Application 07/963,915, filed October 20, 1992. 49
Accorded Benefit of U.S. Application No. 07/308,210, filed
February 8, 1989, now Patent No. 5,015,544, issued May 14, 1991.
Assignors to Strategic Energy Ltd.
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RICHARD T. CATALDI, PATRICK D. HEIN, HENRY J. HEIRIGS
AND JOHN C. LEO (REISSUE)
Junior Party,47
v.
JAMES R. BURROUGHS AND ALAN N. O’KAIN (PATENT)
Junior Party,48
JAMES R. BURROUGHS AND ALAN N. O’KAIN (REISSUE)
Senior Party.49
____________
Interference No. 103,036
____________
REMAND AFTER HEARING MAY 29, 1997
____________
Before URYNOWICZ, RONALD H.SMITH, and SOFOCLEOUS, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
FINAL DECISION WITH RESPECT TO THE PARTY WANG ET AL.
Interference No. 103,036
-3-
The subject matter of this interference relates to a
battery with a strength indicator. The count of this
interference is as follows:
Count 1
A battery having a label with an integral voltmeter; wherein the
voltmeter comprises:
A) a dielectric layer;
B) a conductive layer above or below the dielectric layer; and
C) a temperature sensitive color indicator layer in thermal
contact with the conductive layer, characterized in that 1) the
conductive layer has i) sufficient heat generating capacity to
affect a change in the temperature sensitive color indicator
layer and ii) sufficient thermal insulating means under one of
its surfaces to overcome heat sinking when the voltmeter is in
contact with a battery having an electrically conducting housing
and 2) the voltmeter includes means for forming an electrical
switch with the electrically conductive battery housing.
The party Wang et al.'s claims 22 to 24 and 43 to 63,
the party Tucholski's claims 1 to 35 and 46 to 70, the party
Cataldi et al.'s patent claims 9 to 29, the party Cataldi et
al.'s reissue claims 9 to 25 and 28 to 40, the party Burroughs et
al.'s patent claims 1 to 11 and the party Burroughs et al.'s
reissue claims 13 to 51 correspond to the count.
In Interlocutory Order No. 2, dated May 10, 1996 (Paper
No. 494), the Administrative Patent Judge (APJ) listed and
acknowledged the 91 preliminary and miscellaneous motions and
Interference No. 103,036
In an order, dated December 12, 1994 (Paper No. 77), the APJ50
in charge of the interference at that time authorized the parties to
file comments in support of or in opposition to a motion directed at
another party.
This decision addresses the issues raised by the party Wang51
et al.; the accompanying final decisions address the issues raised by
the parties Tucholski and Cataldi et al.
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requests, the various oppositions, replies thereto and comments50
to various oppositions and replies, filed by the parties. In
addition, the APJ opened preliminary statements and ordered their
service. At the same time, the APJ placed the junior parties
Tucholski and Cataldi et al. under an order to show cause why
judgment should not be entered against them in view of the fact
that the dates alleged in their preliminary statements did not
overcome the filing date of the senior party Burroughs et al.
The junior parties Tucholski and Cataldi et al. filed
responses to the show cause order. The purpose of this final
hearing is to determine whether the junior parties Tucholski51
and Cataldi et al. have shown sufficient cause to avoid the entry
of judgment against them. In the concurrent decisions
accompanying this order, we have held that the junior parties
Tucholski and Cataldi et al. did not show sufficient cause to
avoid the entry of judgment against them and accordingly issued
judgment against those parties.
ISSUES
Interference No. 103,036
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On pages 1 to 3, the party Wang et al.'s opening brief
refers to motions filed by the parties Tucholski and Cataldi et
al. and presents issues raised by its motions under three
categories. For ease of referral, we have retained the party
Wang et al.’s nomenclature.
Interference No. 103,036
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1. Definition of the Issue
A. The party Cataldi et al.'s motion no. 32 to substitute
proposed count 4 for the present count.
B. The party Cataldi et al.'s motion no. 1 to designate the
party Burroughs et al.'s patent claims 1 to 11 and reissue claims
13 to 32, 34 to 36 and 38 to 51 as not corresponding to the
count.
2. Patentability
A. The party Tucholski’s motions for judgment that the claims of
all parties are unpatentable over prior art.
B. Whether the party Burroughs et al.'s reissue claims 1, 3, 4,
7, 8, 13 to 23, 30 to 32, 41, 42, and 50 are unpatentable under
35 U.S.C. §§ 102/103, as urged in the party Wang et al.’s motion
no. 6 (Paper No. 133).
C. Whether Burroughs et al.'s reissue claims are unpatentable on
grounds of unpatentability for abandonment, dedication, or
disclaimer and attempted recapture and for failure to comply with
35 U.S.C. § 251, as urged in the party Wang et al.’s motion no. 3
(Paper No. 130).
D. Whether Burroughs et al.'s reissue claims 13 to 51 are
unpatentable under 35 U.S.C. § 112, first and second paragraphs,
and under 35 U.S.C. § 251, as urged in the party Wang et al.’s
motion no. 7 (Paper No. 134).
Interference No. 103,036
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E. Whether Burroughs et al.'s claims are unpatentable under
35 U.S.C. § 112, second paragraph, and failure to comply with
35 U.S.C. § 251, as urged in the party Wang et al.’s motion no. 5
(Paper No. 132).
3. Other Motions
A. Whether the party Burroughs et al. should be denied the
benefit of the filing date of its patent for failure to meet the
requirements of 35 U.S.C. § 112, first and second paragraphs, and
for failure to comply with 35 U.S.C. § 251, as urged in the party
Wang et al.’s motion no. 4 (Paper No. 131).
B. The party Cataldi et al.’s motion no. 23 that the party
Burroughs et al.’s reissue claims are unpatentable for double
patenting.
C. The party Burroughs et al.’s motion under 37 CFR §§ 1.635 and
1.662(b) that the party Cataldi et al.’s claims are unpatentable.
4. Additional Issue
In Interlocutory Order No. 10, consideration of the
party Wang et al.'s miscellaneous motion no. 20 (Paper No. 656)
to compel the party Burroughs et al. to produce Messrs. Burroughs
and O'Kain for examination on oral deposition was deferred to
final hearing provided that the party file a paper within five
days after final hearing requesting consideration of the matter.
Interference No. 103,036
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Such a paper (Paper No. 792) was filed. Accordingly, the
following additional matter is also before us:
A. Whether the miscellaneous motion no. 20 to compel should be
granted.
Interference No. 103,036
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OPINION
Issues Entitled to Consideration
Interlocutory Order No. 9, Section VI (page 17),
identifies the motions filed by the party Wang et al. to be
considered at final hearing. These are the party Wang et al.’s
motion nos. 3 to 7, which are raised in issues 2B to 2E and 3A.
The motions raised by issues 1A, 1B, 2A, 3B and 3C are not
entitled to any consideration since the motions were not
identified in the interlocutory order. Accordingly, the motions
entitled to consideration are those raised in issues 2B to 2E, 3A
and 4A.
Issue 2B
Issue 2B concerns the party Wang et al.’s motion no. 6
that the party Burroughs et al.’s claims are unpatentable over
prior art. The argument concerning this motion appears in the
party Wang et al.’s main brief at pages 30 to 66. Motion no. 6,
which appears on pages 134 to 158 of the party Wang et al.’s
record (WR 134 to 158) urges the following grounds for
unpatentability:
1. Burroughs et al.’s claims 13 to 23, 30 to 32, 41 and 42 are
unpatentable under 35 U.S.C. § 103 as being obvious over Kiernan,
U.S. Patent No. 4,723,656 (the party Wang et al.’s exhibit no. 22
Interference No. 103,036
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(WX 22)), in view of Kameda, U.S. Patent No. 4,421,958 (WX 7) and
Sterling, U.S. Patent No. 1,497,388 (WX 10). [WR 138 to 140]
2. Burroughs et al.’s claims 13 and 30, as amended, are
unpatentable under 35 U.S.C. § 103 as being obvious over
Mullersman, U. S. Patent No. 4,379,816 (WX 21) or Sterling (WX
10) in view of Kiernan (WX 22). [WR 141 to 142]
3. Burroughs et al.’s claims 16 to 18 and 20 to 22 are
unpatentable under 35 U.S.C. § 102 as being anticipated by
Kiernan (WX 22). [WR 142 to 146]
4. Burroughs et al.’s claims 19 and 23 are unpatentable under
35 U.S.C. § 103 as being obvious over the combination of Kiernan
(WX 22) and Parker, U.S. Patent No. 4,006,414 (WX 11). [WR 146
and 147]
5. Burroughs et al.’s claims 1, 3, 4, 7 and 8 are unpatentable
under 35 U.S.C. § 103 as being obvious over prior art, i.e,
Kiernan (WX 22) modified by Iwai et al., U. S. Patent No.
4,456,798 (WX 8), Kameda (WX 7), Dulen, U.S. Patent No. 4,324,962
(WX 9) and Sterling (WX 10). [WR 147 to 155]
The party Wang et al.’s arguments in the brief and
motion no. 6 are premised on our making the following findings of
fact:
Interference No. 103,036
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Page 35 of the brief urges that Sterling "teaches the
need for a switch when a tester is attached to the terminals of a
battery."
Page 35 of the brief urges that the "nature of the
Kiernan et al. tester would require a switch in a multi-layer
device such as the switches disclosed in Kameda."
Page 42 of the brief urges that Sterling discloses a
voltage indicator, which has an electrical switch means on the
side of the battery.
Motion no. 6 is denied for essentially the reasons that
we set forth in our Final Decision (Paper No. 801) with respect
to the party Tucholski, wherein we denied its preliminary motions
(Paper Nos. 81 and 666) and for the reasons set forth in the
party Burroughs et al.’s opposition brief (Paper No. 763).
In the aforementioned final decision, we held that the
party Tucholski did not sustain its burden of proof to show that
the Burroughs et al.’s claims corresponding to the count are
unpatentable over Kiernan (WX 22), alone or in combination with
Sterling (WX 10). In so holding, we made several findings of
fact. On page 15 of the decision we found that the Kiernan
patent fails as an anticipation of the party Burroughs et al.’s
claims because the patent does not disclose either a battery
strength indicator attached to the side of a battery housing or
Interference No. 103,036
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any type of switch attached to the side of the battery housing.
On pages 21 and 22 of the decision, we found that the Sterling
patent does not disclose the particular indicating device of the
party Burroughs et al.’s claims and does not teach or suggest the
use of a switch.
Our findings are contrary to those upon which motion
no. 6 is premised. Consequently, since the grounds of
unpatentability urged against the Burroughs et al. claims are
premised on findings which we did not make, the party Wang et al.
has not sustained its burden to show that the Burroughs et al.’s
claims are unpatentable.
For the foregoing reasons, motion no. 6 is denied.
Issue 2C
Issue 2C concerns the party Wang et al.’s motion no. 3
which appears at WR 22 to 35. The motion urges that the party
Burroughs et al.’s claims are unpatentable as drawn to subject
matter which was abandoned, dedicated, or disclaimed as a matter
of law upon the grant of the party’s involved patent, without the
filing of a divisional or continuation application thereto. The
motion also urges that the presentation of the reissue claims is
an attempted recapture of deliberately canceled claims and misuse
of the reissue statute for hindsight reconstruction, as an
application for such subject matter has been determined not to be
Interference No. 103,036
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such error as is encompassed by 35 U.S.C. § 251. To the extent
that motion no. 3 raises the same grounds for unpatentability as
raised by the party Cataldi et al.’s motion no. 24, motion no. 3
is denied for the reasons set forth in the Final Decision (Paper
No. 802) with respect to the party Cataldi et al.
To the extent that motion no. 3 urges that the party
Burroughs et al.’s claims are unpatentable as drawn to subject
matter which was abandoned, dedicated, or disclaimed, the motion
is denied. As the moving party, the party Wang et al. has the
burden of proof by a preponderance of the evidence on the motion.
Kubota v. Shibuya, 999 F.2d 517, 519, n.2, 27 USPQ2d 1418, 1420,
n.2 (Fed. Cir. 1993). The party Wang et al. has not sustained
its burden of proof since it has not analyzed each of the reissue
claims vis-à-vis each claim canceled during ex parte prosecution
of the party Burroughs et al.’s involved patent. Nonetheless we
have reviewed the claims canceled during ex parte prosecution and
we are not persuaded that the party Burroughs et al. has
attempted in its reissue application to recapture subject matter
canceled during the original prosecution of its patent. We agree
with the party Burroughs et al. that its reissue application
contains claims, which are narrower or materially different from
the canceled claims.
For the foregoing reasons, motion no. 3 is denied.
Interference No. 103,036
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Issues 2D, 2E and 3A
These issues concern the party Wang et al.’s motion
nos. 4, 5, and 7, which appear at WR 74 to 81, 101 to 108, and
210 to 235. These motions urge that the party Burroughs et al.’s
reissue claims 13 to 51 are unpatentable under 35 U.S.C. § 112,
first and second paragraphs, and under 35 U.S.C. § 251.
These motions urge the same grounds for unpatentability
as urged by the party Tucholski in its preliminary motion (Paper
No. 82) for judgment and by the party Cataldi et al. in its
preliminary motion nos. 2, 3, and 24 and are denied for the
reasons set forth in the Final Decision (Paper No. 802) with
respect to the party Tucholski’s motion and in the Final Decision
(Paper No. 803) with respect to the party Cataldi et al.’s
motions.
Since we have held that the Burroughs et al. reissue
application complies with 35 U.S.C. § 112, first and second
paragraphs, and 35 U.S.C. § 251, no basis exists to deny
Burroughs et al., as the reissue applicants, the benefit of the
filing date of its involved patent.
For the foregoing reasons, motion nos. 4, 5, and 7 are
denied.
Issue 4A
Interference No. 103,036
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Issue 4A concerns the party Wang et al.’s miscellaneous
motion to compel the party Burroughs et al. to produce Messrs.
Burroughs and O’Kain for examination on their declaration which
was presented during ex parte prosecution and which is not being
relied upon by the party Burroughs et al. The motion is denied.
If a party believes that additional evidence in the
form of testimony, such as that of an opponent’s witness, is
necessary to support a preliminary motion, the party is required
by 37 CFR § 1.639(c) to describe the nature of the testimony as
specified by 37 CFR § 1.639(f). We fail to find where the party
Wang et al. asserts in any of its preliminary motion nos. 3 to 5
and 7 that the testimony of Messrs. Burroughs and O’Kain on their
ex parte Rule 132 declaration is necessary in order to decide
those preliminary motions or where the party Wang et al. made a
showing in accordance with 37 CFR § 1.639(c) and (f) in any of
those motions. Nowhere does the party Wang et al. state in its
miscellaneous motion that such a showing in accordance with
37 CFR § 1.639(c) and (f) was made in any of the preliminary
motions. It is not appropriate for a party filing a preliminary
motion, which does not state that the testimony of an opponent’s
witness is necessary to decide the motion, to now request the
testimony of the witness. Cf. Hanagan v. Kimura, 16 USPQ2d 1791,
1794 (Comm’r. Pats. 1990).
Interference No. 103,036
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For the foregoing reasons, the motion to compel is
denied.
REMAND
The interference is remanded to the APJ in charge of
this interference for further proceedings not inconsistent with
this order.
_____________________________ )
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
_____________________________ ) BOARD OF PATENT
RONALD H. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
_____________________________ )
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )