Noelle v. Armitage

Paper No. 33
APJ Richard Torczon
BOX INTERFERENCE
WASHINGTON DC 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
NOELLE
(0*/***,***),
Junior Party,
v.
ARMITAGE,
(0*/***,***),
Senior Party.
_______________
Patent Interference No. 104,724
_______________
ORDER
(CHANGE IN ASSIGNED ADMINISTRATIVE PATENT JUDGE;
CONSIDERATIONS IN SEEKING SUSPENSION)
INTRODUCTION
This case was transferred to avoid a prospective conflict of interest. The parties also
wanted to explore options for suspending the interference.
DISCUSSION
The parties initiated a telephone conference to discuss scheduling issues. At the time,
they noted that the case had been transferred to a different administrative patent judge. The
original administrative patent judge became aware of press reports that one real party-in-interest
was pursuing a merger that might have created a conflict of interest for that administrative patent

Interference No. 104,724
Noelle v. Armitage Page 2
Paper No. 33
1 Assuming neithe r party is subject to a term inal disclaimer over a patent.
2 Long suspensions can cause practical problems as well. For instance, a suspension and terminal disclaimer
can converge on each other suc h that the suspen sion is still in effect when th e terminal disclaim er eliminates all
remaining potential term.
judge. This event illustrates how important it is for parties to ensure that the statements of real
party-in-interest are both complete and up-to-date. It is difficult for administrative patent judges
to avoid conflicts that they do not know about.
The parties noted that because of the merger, as well as an appeal in a related
interference, there would be some merit in suspending the interference. Both parties are
applicants. Hence, a suspension would effectively be an extension of any resulting patent term.1
Ordinarily, the agency regards suspensions with extreme disfavor. In view of this sentiment, the
parties inquired about the possibility of terminally disclaiming their applications for a period
equivalent to the duration of the suspension. They both indicated that they would discuss this
possibility with their respective clients.
Terminal disclaimers have been permitted as a condition for suspending an interference,
although permission is not automatic. Two of the additional factors to consider are:
1. Duration. The "progress of the useful arts" rationale underlying the patent system
means that a suspension in the publication of an invention disclosure works a
policy harm. Even when the disclosures are available through other publications
the extended withholding of information about what is claimed could be injurious
to the public. Consequently, long suspensions are likely to be denied even when a
terminal disclaimer is offered.2

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2. Other proceedings. A disruption or term extension in another proceeding is not
cured by a terminal disclaimer in the suspended proceeding.
ORDER
It is 
ORDERED that the heading on all future papers the parties file in this interference be
modified to show that the papers are directed to the undersigned.
Entered: 26 April 2002 RICHARD TORCZON
Administrative Patent Judge