602 F.2d 969 | C.C.P.A. | 1979
This appeal is from an award of priority, by the Patent and Trademark Office (“PTO”) Board of Patent Interferences (“board”), of invention of the counts in issue (counts 2-7) to the senior party, Satomura. We vacate the award of priority and remand the case for further proceedings.
Subject Matter of the Counts
Count 7 is illustrative of the invention:
7. A polymer of polymerizable hydroxyalkylmethacrylate sulfo esters characterized by monomer units of the formula
CHa
-ch2-c
CO - (- O - CH2 - CH2) n - O - S02 -R
wherein n is an integer equal to 1 or 2 and R is selected from the group consisting of C6H5-, CH3C6H4- and CH3-.
Background
In order to provoke an interference, Satomura, in his application,
The board held that, since the Commissioner’s delegate had ruled that Peska’s second motion for benefit was not properly transmissible to the primary examiner for consideration, it was without authority to act, citing 37 CFR 1.258.
OPINION
The dispositive issue is whether the board erred in refusing to set the case down for final hearing pursuant to 37 CFR 1.225 and in entering judgment against Peska pursuant to the interference examiner’s show cause order.
Under 37 CFR 1.258(b), the issue of whether a party should be accorded benefit of a prior application will not be heard at final hearing unless it was earlier the subject of a motion under 37 CFR 1.231(a)(4). The method of preserving the right to a final hearing on such an issue is provided by 37 CFR 1.225, which permits an issue that was previously the subject of a “proper motion” under 37 CFR 1.231 to be reviewed at final hearing.
In view of the foregoing, we hold that the board erred in refusing to set the case down for final hearing on the issue of whether Peska is entitled to the benefit of his earlier filed Czech application
The board’s award of priority to Satomura is vacated and the case is remanded for further proceedings consistent with this opinion.
VACATED AND REMANDED.
DECISION ON PETITION FOR REHEARING
Appellee Satomura seeks reconsideration of this court’s decision entered (with opinion) May 17, 1979, which vacated an award of priority to Satomura and remanded the case for further proceedings. The Solicitor of the United States Patent and Trademark Office (“PTO”) has filed an amicus curiae brief, and appellants Peska et al. (“Peska”) have filed a brief in opposition to the petition for rehearing and in reply to the amicus brief. Appellee has also filed a brief in reply to the amicus brief.
Amicus suggests that the court may have “misunderstood” the meaning of 37 CFR 1.258(b) and states that “interference practice” in the PTO has “consistently interpreted” that regulation to mean that a party will not be entitled (absent a good reason) to raise at final hearing a question of right to benefit unless a (proper) motion is (1) filed, (2) transmitted by the interference examiner to the primary examiner, and (3) decided by the primary examiner; further, that a motion which is filed with the interference examiner but not transmitted by him to the primary examiner is not a “motion” within the meaning of section 1.258(b), so that it would not be reviewed by the Board of Patent Interferences at final hearing.
However, it is clear that section 1.258(b) and section 1.231(a)(4) to which it refers do not specify steps (2) and (3) and that the filing of a (proper) motion is all that those regulations require. As Amicus states, section 1.231(d) provides for transmitting all “proper” motions to the primary examiner for decision. If, through error of the interference examiner (as the court noted was the case with Peska’s first motion for benefit), a “proper” motion is not transmitted, such error can be raised by petition to the Commissioner under section 1.244. That was not done here, since Peska did not file such a petition. However, we cannot agree with Amicus that such failure to file constituted “acquiescence” in the interference examiner’s error in light of Peska’s subsequent second motion for benefit and his efforts to have the case set down for final hearing under section 1.225.
As to Peska’s second motion for benefit and the ruling of the Commissioner’s delegate (Chairman of the Board of Patent Interferences) that the interference examiner erred in deciding to refer the motion to the primary examiner, Amicus proposes to rectify' said ruling by having this court vacate the award of priority and remand the case to the Board of Patent Interferences, with the understanding that Peska’s second motion for benefit will be transmitted to the primary examiner for a decision on the merits. Amicus asserts that such a course of action would have the same result as
Although the court appreciates the good faith efforts of the Solicitor in behalf of the PTO to reach a just result by accommodating Peska’s rights and PTO interference practice, an order of this court (even though labelled an “understanding”) specifying certain internal procedure to be followed by the PTO would amount to a writ of mandamus, which is not appropriate in the circumstances before us. Moreover, we do not share Amicus’ concern that this court’s opinion in this unique case will “create administrative problems by prolonging interferences and will present problems for parties involved in interferences.” Rather, such problems would appear to arise from an absence of coordination between “interference practice” in the PTO and its own regulations.
We adhere to our holding that the board erred in entering judgment against Peska pursuant to the show cause order. We adhere to our decision vacating the board’s award of priority to Satomura and remanding the case for further proceedings consistent with the original opinion which, however, is hereby modified as follows: our holding that the board erred in refusing to set the case down for final hearing on the issue of whether Peska et al. are entitled to the benefit of their earlier filed Czech application, is revoked. This, we believe, will permit the PTO in further proceedings to follow such internal procedure as it considers proper, consistent with preserving Peska’s rights of due process.
Except for the above-noted modification of our May 12,1979, opinion, appellee’s petition is denied.
PETITION DENIED.
. Serial No. 407,034, filed October 16, 1973, entitled “Functional Polymer and Image-Forming Method Therewith.”
. U.S. patent No. 3,959,236, issued May 25, 1976, entitled “Polymers and Copolymers of Hydroxyalkyl Methacrylate Sulfo Esters and the Method for their Manufacture.”
. 37 CFR 1.231(a)(4) provides, in pertinent part:
(a) Within the period set in the notice of interference for filing motions any party to an interference may file a motion seeking:
(4) To be accorded the benefit of an earlier application
. Application No. PV5754-73, filed August 15, 1973.
. Application No. 103550/72, filed October 18, 1972.
. 37 CFR 1.231(b) provides, in pertinent part:
Each motion must contain a full statement of the grounds therefor and reasoning in support thereof.
. Peska stated that there was no objection to the substitution of count 7 for count 1.
. 37 CFR 1.258(b) reads as follows:
*972 At final hearing a party shall not be entitled to urge consideration of a matter relating to the benefit of an earlier application of his own or of another party unless he has presented such matter in connection with a motion under § 1.231(a)(4), or shows good reason why it was not so presented.
. 37 CFR 1.225 reads as follows:
(a) If a junior party to an interference fails to file a preliminary statement, or if his statement fails to overcome the effective filing date of the application of another party, judgment on the record will be entered against such junior party unless he has filed a proper motion under § 1.231, within the time set for such motions, seeking some action in the interference. If such motion has been timely filed but does not result in action in the interference which .removes the basis for a judgment on the record, such judgment will be entered unless the motion related to a matter which may be reviewed at final hearing under § 1.258, and within 30 days of the decision denying his motion, or a later time set by the patent interference examiner, the junior party concerned requests that final hearing be set to review such matter. Also, such a junior party may within such 30 day period, or time set, request a final hearing to review such a matter raised by his opposition to a motion under § 1.231(a)(2), (3), (4), or (5) which was granted over his opposition, (b) Such a junior party will not be permitted to take testimony except on granting of a motion accompanied by a showing of good cause, which should normally include names of proposed witnesses and affidavits or declarations by them giving their expected testimony.
. Although Peska objects to several procedural decisions in the PTO such as the decision to not transmit the second motion for benefit to the primary examiner, he has not shown a basis for this court’s jurisdiction to review such matters. Cf. In re Hengehold, 58 C.C.P.A. 1099, 1110, 440 F.2d 1395, 1403, 169 U.S.P.Q. 473, 479 (1971); In re Austin, 17 C.C.P.A. 1202, 1210, 40 F.2d 756, 760, 5 U.S.P.Q. 285, 290 (1930). However, this court clearly has jurisdiction to review the correctness of the board’s decision refusing to set the case down for final hearing and awarding priority to Satomura. 35 U.S.C. § 141.
. 37 CFR 1.225 also requires that the junior party make a request that the issue involved be heard at a final hearing; also, that the request be made within a certain time period — either 30 days after denial of the earlier motion or at a later date set by the interference examiner. Such a later date was set in the order to show cause here. Peska, in his response to the order to show cause, made his request for final hearing on this issue. Although it appears that he did not file his response within the time set by the interference examiner, neither the examiner nor the appellee objected to the belatedness of the response, and, we, like the board, treat this as a waiver of the time requirement of the rule. Therefore, we are satisfied that Peska complied with all the requirements of 37 CFR 1.225.
. Although Peska did not move to amend his first motion or file a petition to the Commissioner from the interference examiner’s refusal to transmit the motion to the primary examiner, Land v. Dreyer, 33 C.C.P.A. 1108, 155 F.2d 383, 69 U.S.P.Q. 602 (1946), does not support the board’s refusal to hold a final hearing. Peska did not acquiesce in the interference examiner’s decision, but requested a final hearing on the issue of benefit, as permitted by 37 CFR 1.225.