Rose v. Frazer

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 23
Filed by: Trial Section Motions Panel
Box Interference Filed
Washington, D.C. 20231 17 December 2001
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT C. ROSE, WILLIAM BONNEZ
and RICHARD C. REICHMAN,
Junior Party,
(Application 08/207,309)
v.
IAN FRAZER and JIAN ZHOU,
Senior Party.
(Application 08/185,928)
Patent Interference 104,773 (McK)
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
TORCZON and MEDLEY, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge,
MEMORANDUM OPINION and ORDER
Frazer has filed FRAZER MISCELLANEOUS MOTION 1 (Paper 18)
seeking leave to file FRAZER CORRECTED PRELIMINARY STATEMENT
(Paper 19). The motion is denied without prejudice.
A. Background
This interference (Interference 104,773) is one of six
interferences which replaced now administratively terminated

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Interference 103,929, Rose v. Lowy v. Schlegel v. Frazer. In
Interference 103,929, Frazer had filed a preliminary statement
('929 preliminary statement) in which it alleged, inter alia,
derivation by all opponents. The '929 preliminary statement
alleges that communication took place "on July 20 to 26, 1991".
After this interference was declared, the parties were
directed to file a copy of the '929 preliminary statement. The
'929 preliminary statement was to serve as the preliminary
statement in this interference. Frazer now seeks leave to file a
preliminary statement in this interference which alleges that
communication took place "on July 20, 1991" (Paper 19, Part II,
¶ (6) on page 5).
Since Frazer's opponent would not consent to the relief
requested, prior to filing its miscellaneous motion, Frazer
initiated a telephone conference call to discuss the motion
(Paper 18, page 6, ¶ 15). During the conference call, the board
made several inquiries, including (1) Why is the amendment to the
preliminary statement needed? and (2) How can an opponent be
prejudiced by the amendment sought to be made?
Frazer apparently believes that the '929 preliminary
statement should be corrected because:
(1) Rule 629(a) [37 CFR § 1.629(a)] states that
"doubts as to the definiteness or sufficiency of
any allegation in a preliminary ... will be
resolved against the party filing the statement by
restricting the party ... to the latest date of a
period alleged in the preliminary statement"
(emphasis added) and

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(2) "[t]here is evidently some uncertainty as to
whether this rule [, i.e., Rule 629(a),] applies
to allegations of derivation made in preliminary
statements" (Paper 19, page 11).
Rule 629(a) provides (emphasis added):
A party shall be strictly held to any date alleged in
the preliminary statement. Doubts as to definiteness or
sufficiency of any allegation in a preliminary statement or
compliance with formal requirements will be resolved against
the party filing the statement by restricting the party to
its effective filing date or to the latest date of a period
alleged in the preliminary statement, as may be appropriate.
A party may not correct a preliminary statement except as
provided by § 1.628.
In the Notice of Final Rule, Patent Interference
Proceedings, 49 Fed. Reg. 48416, 48439 (col. 1) (Dec. 12, 1984),
the USPTO stated:
A preliminary statement serves several useful purposes in an
interference: (1) it serves to limit a party's proofs as to
time, (2) it serves as a vehicle for permitting the ***
[administrative patent judge] or the Board to issue orders
to show cause in those cases where it would be futile to
take testimony, and (3) it serves as notice to an opponent
of the case which is alleged by a party.
Under Rule 629(a), a party alleging a conception in "March
1991" will have its date of conception restricted to 31 March
1991. It would not be "appropriate" within the meaning of Rule
629(a) for the party to be entitled to a date of conception prior
to 31 March 1991. Thus, the party would not be entitled to a

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date of conception prior to 31 March 1991 even if the proofs
establish a conception on 28 February 1991.
Likewise, a party alleging an actual reduction to practice
in "1991" will have its actual reduction to practice date
restricted to 31 December 1991. It would not be "appropriate"
within the meaning of Rule 629(a) for the party to be entitled to
an actual reduction to practice date prior to 31 December 1991.
Thus, the party would not be entitled to an actual reduction to
practice date prior to 31 December 1991, even if the proofs
establish an actual reduction to practice on 1 November 1991.
Finally, a party alleging diligence beginning "around 1 June
1991" or "on or about 1 June 1991" will have its date of
beginning of diligence restricted to 1 June 1991. It would not
be "appropriate" within the meaning of Rule 629(a) for the party
to be entitled to a date of beginning of diligence prior to
1 June 1991 even through 29 May 1991 might be considered to be
"around" 1 June 1991.
For the purpose of deciding Frazer's motion, we will assume
the facts set out therein to be true. We do not feel, on those
facts, that an allegation of "communication" "on July 20 to 26,
1991" in connection with an assertion of derivation is indefinite
or insufficient. In other words, we do not believe it would be
"appropriate" within the meaning of Rule 629(a) to limit Frazer
to a communication date of no earlier than 26 July 1991.
According to Frazer, a "Papillomavirus Workshop" took place
in Seattle, Washington, from 20 July 1991 to 26 July 1991.

1 Zhou and Frazer are named as joint inventors in the involved Frazer
application.
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A "Book of Abstracts" is said to have been distributed on 20 July
1991. One abstract (the "Zhou abstract") is said to contain an
enabling description of the invention involved in the
interference.1 Frazer's opponent is said to be named in a "list
of attendees" to the workshop. What Frazer alleges is that a
communication took place during the Workshop sometime between
20 July and 26 July 1991, apparently on the supposition that the
opponent obtained the "Book of Abstract" on 20 January 1991 and
that the opponent read the "Zhou abstract" on the same day.
Obviously, Frazer will be under a burden to establish the precise
date when communication actually took place. That (1) Frazer's
opponent was scheduled to present at the workshop and (2) a Book
of Abstracts was distributed at the workshop does not establish
(a) whether Frazer's opponent was in attendance at the workshop,
(b) when, if ever, the opponent received a copy of the Book of
Abstracts or (c) when the opponent may have first read the Zhou
abstract.
The "July 20 to 26" allegation in the '929 preliminary
statement is sufficient notice to Frazer's opponent of when
communication is said to have taken place. No amendment to the
'929 preliminary statement is necessary in this case at this
time. We will deny Frazer Miscellaneous Motion 1 without
prejudice. In the future, should Frazer or Frazer's opponent
believe that it has suffered actual prejudice as a result of the

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events discussed herein, the board will entertain a further
motion seeking appropriate relief.
B. Order
Upon consideration of Frazer Miscellaneous Motion 1
(Paper 18), and for the reasons given, it is
ORDERED that the motion is denied without prejudice to
renewal as indicated herein.
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )

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cc (via First Class mail):
Counsel for Rose
(real party in interest
assignee The University of Rochester,
Strong Memorial Hospital;
licensees, MedImmune, Inc., and
SmithKline Beecham PLC):
Michael L. Goldman, Esq.
NIXON PEABODY LLP
Clinton Square
Corner of Clinton Avenue & Broad Street
P.O. Box 31051
Rochester, N.Y. 14603
Tel: 716-263-1000 (Main)
Tel: 716-263-1304 (Direct)
Fax: 716-263-1600
E-mail: mgoldman@nixonpeabody.com
Counsel for Lowy
(real party in interest
assignee United States of America, as represented
by the Department of Health and Human Service;
licensees MedImmune, Inc. and Merck & Co., Inc.):
Ned A. Israelsen, Esq.
Brenton R. Babcock, Esq.
Nancy W. Vensko, Esq.
KNOBBE, MARTENS, OLSON & BEAR LLP
620 Newport Center Dr., Sixteenth Floor
Newport Beach, CA 92660
Tel: 949-760-0404 (Main)
Tel: 619-235-8550 (Isrealsen)
Fax: 949-760-9502
E-mail: nisraelsen@kmob.com

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Counsel for Schlegel
(real party in interest
assignee Georgetown University School of Medicine;
licensees MedImmune, Inc. and SmithKline Beecham PLC):
Elliot M. Olstein, Esq.
CARELLA, BYRNE, BAIN, GILFILLAN, CECCHI,
STEWART & OLSTEIN
6 Becker Farm Road
Roseland, N.J. 07068-1739
Tel: 973-994-1700
Fax: 973-994-1744
E-mail: eolstein@carellabyrne.com
E-mail: rlillie@carellabyrne.com
Counsel for Frazer
(real party in interest
assignee CSL Limited (Australia) and Univeristy of
Queensland (Australia); licensee Merck & Co., Inc.):
Beth Borrous, Esq.
FOLEY & LARDNER
3000 K Street, N.W.
Suite 500
Washington, D.C. 20007-5109
Tel: 202-672-5300 (Main)
Tel: 202-672-5475 (Direct dial)
Fax: 202-672-5399
E-mail: bburrous@foleylaw.com