Basmadjian v. Landry

THIS OPINION IS A PRECEDENTIAL OPINION
The opinion below has been designated by the Board as
precedential with respect to Part I of the opinion
relating to the summary judgment practice of the Board.
The remainder of the opinion (1) was not written for
publication in a law journal and (2) is not binding
precedent of the Board. The judgment issued August 13,
1997.
Paper No. 22
Filed by: Merits Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-308-7953
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
GARO BASMADJIAN and STANLEY L. MILLS
Junior Party,
v.
DONALD W. LANDRY and KANG ZHAO
Senior Party.
_______________
Patent Interference No. 103,694
_______________
Before: STONER, Chief Administrative Patent Judge, and
McKELVEY, Senior Administrative Patent Judge, and HANLON,
Administrative Patent Judge.
McKelvey, Senior Administrative Patent Judge
MEMORANDUM OPINION AND ORDER
GRANTING SUMMARY JUDGMENT AGAINST BASMADJIAN AND MILLS
(37 CFR § 1.617)

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This interference is before a merits panel for a
determination of whether summary judgment should be entered
against Basmadjian and Mills (Basmadjian), the junior party
applicant in this junior party applicant versus senior party
patent interference. We conclude that entry of summary judgment
is appropriate.
I.
Summary judgment practice in patent interference
proceedings before the Patent and Trademark Office
There have been "summary judgment" proceedings in patent
interference proceedings in the Patent and Trademark Office
(PTO) since January 1, 1965. 29 Fed. Reg. 15866 (Nov. 26, 1964)
(amending 37 CFR § 1.204(b) and adding 37 CFR §§ 1.204(c) and
1.228)). We take this opportunity to (1) discuss generally
summary judgment practice in patent interferences, (2) address
concerns which have been mentioned in opinions entered in our
appellate reviewing court, the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit), and (3) clarify the
appropriate substantive evidentiary standard applicable in
resolving summary judgment proceedings in patent interference
cases.

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A.
Why does patent interference practice include
a summary judgment procedure?
The rationale in support of summary judgment proceedings in
patent interferences is articulated in Kistler v. Weber, 412 F.2d
280, 285, 162 USPQ 214, 218-19 (CCPA 1969) (CCPA's footnotes
omitted):
The expense involved in a protracted interference,
and the special hardships workable on a patentee
involved therein, are notorious, and to minimize
both, where possible, would appear to be the
laudable purpose of these rules. If a junior
party [applicant] is in fact "a first inventor"
and if he could prove that in a "full hearing on
priority," we see no reason why he should be
prejudiced or unduly burdened by a requirement
that he prove (prior to a "full hearing") by way
of affidavits and documentary evidence that he is
at least prima facie entitled to an award of
priority over the patentee's effective filing
date.
By "these rules," the CCPA is referring to former Rules 204(c)
[37 CFR § 1.204(c)] and 228 [37 CFR § 1.228]. Rule 204(c), then
in effect, is reproduced in footnote 1 of the CCPA's opinion.
Rule 228, then in effect, is reproduced in footnote 4 of the

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CCPA's opinion. The corresponding rules today are Rule 608(b)
[37 CFR § 1.608(b)] and Rule 617 [37 CFR § 1.617)].
B.
What is required to avoid summary judgment
in a patent interference proceeding?
An interference may be declared between a pending
application and an unexpired patent. 35 U.S.C. § 135(a); 37 CFR
§ 1.606. When the effective filing date of the application is
more than three (3) months after the effective filing date of a
patent, before an interference will be declared, the applicant is
required to file:
(1) evidence which demonstrates that the applicant is
prima facie entitled to a judgment vis-à-vis the
patentee, and
(2) an explanation stating with particularity the
basis upon which the applicant would be entitled
to the judgment.
37 CFR § 1.608(b). The evidence and explanation are often
referred to as a "Rule 608(b) showing."
The evidence may consist of patents, printed publications,
other documents and one or more affidavits. Id. The term
"affidavit" includes a declaration. 37 CFR § 1.601(b). "Any
printed publication or other document which is not self-
authenticating shall be authenticated and discussed with
particularity in an affidavit." 37 CFR § 1.608(b).

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In the event a witness is not available, an affidavit may be
based on "information and belief." The affidavit should state
what it is believed the witness would say if the witness had been
available. 37 CFR § 1.608(b); Golota v. Strom, 489 F.2d 1287,
1293, 180 USPQ 396, 400-401 (CCPA 1974); Surabian v. Brecher,
16 USPQ2d 1312, 1314 (Bd. Pat. App. & Int. 1990). Generally a
witness is not available if the witness' "testimony" must be
compelled under 35 U.S.C. § 24, 37 CFR § 1.671(g) and 37 CFR
§ 1.672(a).
When the basis upon which an applicant attempts to establish
a prima facie case for judgment vis-à-vis the patentee is
priority of invention, the evidence shall include affidavits by
the applicant, if possible, and one or more corroborating
witnesses, supported by documentary evidence, if available, each
setting out a factual description of acts and circumstances
performed or observed by the affiant. Id. Alternatively, the
evidence may relate to patentability and need not be restricted
to priority. Notice of Final Rule, Patent Interference
Proceedings, 49 Fed. Reg. 84816, 48421 col. 3 (Dec. 12, 1984),
reprinted in 1050 Off. Gaz. Pat. Office 385, 390 col. 3 (Jan. 29,
1985). For example, an applicant can establish that it is
entitled to a judgment vis-à-vis a patentee based on a prima
facie showing of the unpatentability of the invention to the
patentee under the first paragraph of 35 U.S.C. § 112, e.g., that
the patentee's specification is not enabling. Compare Gould v.

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Hellwarth, 472 F.2d 1383, 176 USPQ 515 (CCPA 1973), where the
senior party's specification was held to be non-enabling. In
summary judgment proceedings in patent interference cases, the
applicant's specification is presumed to be enabling. If it were
otherwise, the primary examiner would not have forwarded the
application and patent to the board for declaration of an
interference. Rather, the applicant's claims would have been
rejected ex parte for failure to comply with the how to make or
use requirement of the first paragraph of 35 U.S.C. § 112.
C.
Why do the rules require that non-self-authenticating
documents be described with particularity?
"Any printed publication or other document which is not
self-authenticating shall be authenticated and discussed with
particularity in an affidavit." 37 CFR § 1.608(b). An example
of a document which is not self-authenticating is a laboratory
notebook customarily maintained by research personnel,
particularly notebooks maintained in chemical and
biotechnological research organizations in the United States.
Prior to the rule changes in 1984, there was judicial and
administrative precedent which should have discouraged the
submission of unexplained non-self-authenticating documents.
Chandler v. Mock, 150 F.2d 563, 66 USPQ 209 (CCPA 1945) (records
standing alone were held to be meaningless); Smith v. Bousquet,
111 F.2d 157, 45 USPQ 347 (CCPA 1940) (unexplained tests in

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stipulated testimony are entitled to little weight); Popoff v.
Orchin, 144 USPQ 762 (Bd. Pat. Int. 1963) (unexplained
experimental data should not be considered). See also In re
Borkowski, 505 F.2d 713, 718, 184 USPQ 29, 33 (CCPA 1974) and
Triplett v. Steinmayer, 129 F.2d 869, 871, 54 USPQ 409, 411-12
(CCPA 1942). Nevertheless, counsel regularly continued to submit
non-self-authenticating documents, particularly laboratory
notebooks, without particularized testimony by a witness having
first-hand knowledge of the content of a document or the events
supposedly set out in the document. Over an objection that the
rules "should not be used to train attorneys ***", Notice of
Final Rule, supra at 48447 col. 3, 1050 Off. Gaz. Pat. Office at
416, the rules were amended in 1984 to require the particularized
explanation of material in non-self-authenticating documents.
37 CFR § 1.608(b) and 37 CFR § 1.671(f). As the Notice of Final
Rule states:
By providing in the rules that documentary
evidence must be explained, the PTO hopes to save
both parties and the Board considerable difficulty
in presenting and evaluating evidence.
D.
What is the limited role of a primary examiner in
connection with a showing under 37 CFR § 1.608(b)?
When a patent has an effective filing date more than three
months before the effective filing date of the application, the

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primary examiner determines, ex parte, whether evidence and an
explanation have been filed. 37 CFR § 1.608(b), last sentence.
The evidence and explanation are considered by the primary
examiner "only to the extent of determining whether a basis upon
which the application would be entitled to a judgment relative to
the patentee is alleged ***" (emphasis added). Id. The primary
examiner is concerned only with procedural compliance with the
requirements of 37 CFR § 1.608(b). Thus, the primary examiner
does not consider the sufficiency on its merits of the
applicant's evidence and explanation.
If the primary examiner determines that (1) evidence has
not been filed or (2) an explanation has not been submitted or
(3) any evidence and explanation, which have been filed, do not
allege a basis upon which the applicant would be entitled to a
judgment relative to the patentee, the primary examiner will
enter an ex parte prior art rejection based on the patent. An
interference is not initiated, because the patent is considered
to render the applicant's claims unpatentable under 35 U.S.C.
§ 102(a), 35 U.S.C. § 102(e) or 35 U.S.C. § 103 until such time
as the applicant procedurally complies with 37 CFR § 1.608(b).
The primary examiner's final rejection based on a finding
that (a) evidence has not been filed or (b) an explanation has
not been filed or (c) any evidence and explanation fail to allege
a basis upon which the applicant would be entitled to prevail
vis-à-vis the patentee may be appealed to the Board of Patent

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Appeals and Interferences (board). 35 U.S.C. § 134. Assuming
that the applicant is claiming the same patentable invention as
the patent, the issue on appeal to the board would not involve
the merits of the sufficiency of any evidence and/or explanation.
Rather, the appeal would involve a question of whether there has
been procedural compliance with 37 CFR § 1.608(b). An applicant
dissatisfied with a decision of the board may appeal to the
Federal Circuit, 35 U.S.C. § 141, or seek judicial review in the
U.S. District Court for the District of Columbia, 35 U.S.C.
§ 145. Ex parte appeals to the board or the Federal Circuit
based on a failure to file evidence, an explanation or allege a
basis upon which an applicant is entitled to prevail vis-à-vis
the patentee are, and should be, rare. The only known appeal
involving an alleged failure to procedurally comply with the
explanation requirement of 37 CFR § 1.608(b) in the Federal
Circuit is In re Baysdon, Appeal No. 93-1168. In Baysdon, the
board had held that an explanation, as required by 37 CFR
§ 1.608(b), had not been filed by the applicant. The appeal to
the Federal Circuit was ultimately settled after briefing and
oral argument when Baysdon agreed to file a supplemental
explanation.

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E.
What is the role of the board and an
administrative patent judge assigned to the interference?
When the primary examiner determines that an applicant has
submitted evidence and an explanation and has alleged a basis
upon which the applicant would be entitled to prevail vis-à-vis
the patentee, the primary examiner forwards the application, the
patent and other relevant information to the board. 37 CFR
§ 1.609.
At the board, the matter is assigned to an administrative
patent judge (APJ). 37 CFR § 1.610(a). An APJ is an individual
appointed as a member of the board pursuant to 35 U.S.C. § 7. An
interference is then declared by the APJ. Id. The APJ assigned
to the interference reviews the Rule 608(b) showing on its merits
(i.e., substantively) to determine whether the applicant has
established that it is prima facie entitled to a judgment
relative to the patentee. 37 CFR § 1.617(a).
If the APJ determines that the applicant has made out a
prima facie case, the interference proceeds in the normal
fashion. There is no administrative review of a decision of an
APJ accepting as sufficient on its merits a showing under 37 CFR
§ 1.608(b).
On the other hand, if the APJ determines that the applicant
has not made out a prima facie case, then concurrently with the
declaration of the interference, an order is entered requiring

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the applicant to show cause why "summary judgment" should not
be entered against the applicant. 37 CFR § 1.617(a). The APJ is
required to articulate the reason or reasons why an order to show
cause is believed to be appropriate. Id.
Although a single APJ normally declares an interference and
reviews any Rule 608(b) showing, an order declaring an
interference and/or an order to show cause may be entered by a
three-judge panel. 37 CFR § 1.610(b), last sentence.
The applicant may file a "response" to the order to show
cause, explaining why the APJ is believed to have erred in
determining that a prima facie case has not been made out by the
applicant. 37 CFR § 1.617(b). "Additional evidence" may be
submitted with the response. Id. However,
[a]dditional evidence shall not be presented by
the applicant or considered by the Board unless
the applicant shows good cause why any additional
evidence was not initially presented with the
evidence filed under § 1.608(b).
Id. The "good cause" standard was first promulgated in the 1984
amendments to the interference rules. Notice of Final Rule,
supra. In addition to the Notice of Final Rule, a discussion of
the "good cause" standard can be found in Hahn v. Wong, 892 F.2d
1028, 13 USPQ2d 1313 (Fed. Cir. 1989). Before 1984, supplemental
evidence would be accepted upon a "showing in excuse of *** [the]
omission [of the supplemental evidence] from the original

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showing." 37 CFR § 1.288 (1984). The language of Rule 288
set "no standard for showing in excuse." Nakayama v. Banner,
588 F.2d 1336, 1342-43, 200 USPQ 266, 270 (CCPA 1978). Under the
"good cause" standard of 37 CFR § 1.617(b), ignorance by a party
or counsel of the provisions of the rules or the substantive
requirements of the law would not constitute good cause. Notice
of Final Rule, supra at 48423, 1050 Off. Gaz. Pat. Office at 392.
On the other hand, "good cause" might be shown if evidence first
comes into existence after a Rule 608(b) showing is filed.
Huston v. Ladner, 973 F.2d 1564, 1566, 23 USPQ2d 1910, 1912-13
(Fed. Cir. 1992) ("if the evidence was not available when the
original showing was filed, this would have been a valid excuse
for not filing the evidence"). Another basis upon which "good
cause" might be established would be where a diligent effort to
find evidence was unsuccessful prior to filing the Rule 608(b)
showing, but continued diligence ultimately succeeded in locating
the evidence after the showing was filed. Whether an applicant
has shown "good cause" is a matter within the discretion of the
board. Hahn v. Wong, supra at 1034, 13 USPQ at 1318.
A patentee may file a "statement" responding to any response
filed by the applicant. 37 CFR § 1.617(d). The term "statement"
as opposed to "opposition" is used in the rules, because the
patentee is not permitted to file any evidence in support of the
statement. Generally in patent interference practice, where
appropriate, evidence may accompany an opposition. See 37 CFR

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§ 1.639(a). The patentee's statement, therefore, is limited to
discussing why all the evidence presented by the applicant does
not overcome the reasons given by the APJ for issuing the order
to show cause. Id. "[S]ummary judgment will not be based on a
rationale raised by a patentee in a statement which does not
correspond to the rationale used by the *** [APJ] in the order to
show cause." Notice of Final Rule, supra at 48438, col. 3, 1050
Off. Gaz. Pat. Office at 407, col. 3. See also Hahn v. Wong, 13
USPQ2d 1211, 1216 (Bd. Pat. App. & Int. 1989), aff'd, 892 F.2d
1028, 13 USPQ 1313 (Fed. Cir. 1989); Surabian v. Brecher, 16
USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 1990).
The applicant may file a reply to patentee's statement.
37 CFR § 1.617(e).
After any response, statement and reply are filed, a
determination is made as to whether summary judgment should be
entered against the applicant based on the evidence submitted
under 37 CFR § 1.608(b) and any additional evidence properly
submitted under 37 CFR § 1.617(b). Only a merits panel can
determine that summary judgment should be entered. 37 CFR
§ 1.610(a). If summary judgment is deemed appropriate by a
merits panel, a final decision is entered against the applicant.
37 CFR § 1.617(g). On the other hand, if the APJ or the merits
panel determines that summary judgment is not appropriate, an
order is entered allowing the interference to proceed in the
normal manner.

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We are aware of language in a dissent in Schendel v. Curtis,
supra, as follows:
The Board was constituted in a curious
manner; first an administrative patent judge, in
his role as examiner, made the decision [to issue
the order to show cause]; then it was reviewed by
a three-member Board presided over by the same
administrative patent judge, who wrote an opinion
sustaining his action, quoting himself with
approval.
83 F.3d at 1406 n.1, 38 USPQ2d at 1749 n.1.
Under the rules, we do not believe that there is any
reason to view as curious the manner in which a merits panel
is constituted to consider whether summary judgment should be
entered. As noted earlier, all interferences normally are
assigned to a single APJ. 37 CFR § 1.610(a). The APJ, not in
any role as a "patent examiner," but in a role as APJ, issues the
order to show cause. Unless the APJ is satisfied with an
applicant's response, the original Rule 608(b) showing, the
response and any properly filed supplemental evidence is
considered by a merits panel. 37 CFR § 1.617(g). Cf. Fed. R.
App. P. 27(c), authorizing a single judge to enter an order
relating to non-dispositive matters, and Fed. Cir. R. 27(k)
providing for requesting review by the court of an order entered
by a single judge.

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Normally, the APJ who issued the order to show cause is also
designated to serve on a merits panel. If a merits panel entered
the order to show cause in the first instance, that same merits
panel would determine whether summary judgment is appropriate.
In this limited sense, it is our understanding that practice
before the board is similar to that before the Federal Circuit.
We understand that each month, the Federal Circuit designates a
motions judge and a motions panel, the latter including the
motions judge. Any review under Fed. Cir. R. 27(k) of a decision
of the motions judge may be by a motions panel which includes the
motions judge.
Any order entered by a merits panel may adopt or reject, in
whole, or in part, findings and conclusions of law of the APJ as
set out in the order to show cause and may set aside a decision
of a single APJ to issue the order to show cause. Any decision
to deny consideration on the merits to supplemental evidence
submitted under 37 CFR § 1.617(b) is made only by a merits panel.
F.
Is there a difference between summary judgment
proceedings under Rule 56 of the Federal Rules of
Civil Procedure and patent interference practice?
The answer is "yes." The use of the phrase "summary
judgment" in 37 CFR § 1.617, and its predecessor 37 CFR § 1.228,
probably was an unfortunate choice of words. Summary judgment in
a patent interference proceeding and summary judgment in a civil

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action before a U.S. District Court differ in several material
respects. However, both forms of summary judgment seek to make
judicial and administrative proceedings efficient by avoiding
unnecessary court trials and administrative evidentiary
proceedings.
1.
In a civil action, generally one party moves for summary
judgment against an opponent. Under patent interference
practice, the applicant has to make out a prima facie case as a
threshold matter. In other words, the applicant has to establish
a right to participate in an interference proceeding somewhat in
the same sense that a plaintiff in a civil action bears the
burden of establishing Article III and "zone of interest"
standing to maintain the civil action. See, e.g., Bennett v.
Spear, ___ U.S. ___, ___, 117 S.Ct. 1154, 1161 (1997) ("a
plaintiff must, generally speaking, demonstrate that he has
suffered 'injury in fact,' that the injury is 'fairly traceable'
to the actions of the defendant, and that the injury will likely
be redressed by a favorable decision" (citations omitted)). For
this reason, entry of a summary judgment against an applicant is
not a "default" judgment. Nor can it be said that entry of a
summary judgment is not a resolution of the interference on the
merits which deprives the applicant of its "day in court." After
all, the applicant is the only party permitted to present
evidence under 37 CFR § 1.608(b), and that evidence is fully

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evaluated on its merits by an APJ in the first instance and, if
necessary, by a merits panel.
2.
In a civil action in a district court, the moving party has
the burden of establishing (1) the absence of a genuine issue of
a material fact and (2) its entitlement to a judgment as a matter
of law based on the undisputed facts. Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986). Under patent interference practice,
the applicant bears the burden of establishing the facts and the
existence of a prima facie case to avoid entry of summary
judgment.
3.
In a civil action, the district court in deciding a motion
for summary judgment views the evidence in a light most favorable
to the non-movant and all reasonable inferences must be drawn in
the non-movant's favor. United States v. Diebold, 369 U.S. 654,
655 (1962). Under patent interference practice, the applicant
must make out a prima facie case and, therefore, the evidence
is not necessarily viewed in a light most favorable to the
applicant. As the Federal Circuit has aptly noted, "[e]ven
a prima facie case requires some real proof, not just vague
inference, based on surrounding circumstances that tangentially
support the inventor's goal." Schendel v. Curtis, 83 F.3d 1399,
1405 n.8 second paragraph, last sentence, 38 USPQ2d 1743, 1748
n.8 second paragraph, last sentence. Thus, where plausible

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alternative inferences are possible based on the evidence
presented by the applicant, the alternative least favorable to
the applicant may be drawn on the theory that the applicant
failed to prove its case.
4.
In a civil action, both parties are permitted to present
evidence in a summary judgment proceeding. Fed. R. Civ. P. 56.
Under patent interference practice, only the applicant may
present evidence.
G.
What is the meaning of prima facie within the
meaning of 37 CFR § 1.608(b) and 37 CFR § 1.617(a)?
To establish a prima facie case, an applicant must prove at
least so much of applicant's case as would entitle applicant to a
judgment with respect to the patentee if the patentee were to
rely on only patentee's effective filing date and were not to
rebut any of the applicant's case. Hahn v. Wong, supra at 1032,
13 USPQ2d at 1317, citing Kistler v. Weber, 412 F.2d 280, 285,
162 USPQ 214, 218 (CCPA 1969). See also Golota v. Strom,
489 F.2d 1287, 1291-92, 180 USPQ 396, 399-400 (CCPA 1974).
H.
What evidentiary standard should be applied
in summary judgment determinations in patent
interference proceedings?
In Schwab v. Pittman, 451 F.2d 637, 640, 172 USPQ 69, 71
(CCPA 1971), the CCPA made the following observation:

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the language of Patent Office Rule 228 states a
test which differs from the test under Federal
Rule [of Civil Procedure] 56. First it must be
determined whether the showing submitted under
Rule 204(c) provides "sufficient basis for
overcoming the effective filing date of the
patentee," i.e., whether Rule 204(c) has been
complied with and a prima facie case of priority
has been established. Note that the burden on the
applicant here is not to prove beyond a reasonable
doubt, or even by a preponderance of the evidence,
but merely to establish a prima facie case.
The CCPA's observation in Schwab v. Pittman was made prior to the
Supreme Court's decision in Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 255-56 (1986). In Anderson, the Supreme Court held
that whether a given factual dispute should be submitted to a
jury must be guided by the substantive evidentiary standard that
applies to the case. Of course, there is no jury in a patent
interference proceeding. However, summary judgment practice in
patent interference proceedings seeks to spare the patentee the
expense of an administrative "trial" unless an applicant makes
out a prima facie case.
The rationale behind the Supreme Court's decision to apply
the substantive evidentiary standard in summary judgment
proceedings under Fed. R. Civ. P. 56 applies with equal force to

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"summary judgment" proceedings under patent interference
practice. Thus, in a civil action the judge "unavoidably asks
whether reasonable jurors could find by a preponderance of the
evidence that the plaintiff is entitled to a verdict ***."
477 U.S. at 252. In summary judgment proceedings in patent
interference cases, the APJ, and ultimately a merits panel of the
board, unavoidably ask whether applicant has shown that it is
prima facie entitled to a judgment vis-à-vis the patentee.
The general rule is that a junior party must prove its case
by a preponderance of the evidence, although there are some cases
where the burden of proof is clear and convincing evidence. See
37 CFR § 1.657(b) and (c), codifying holdings in Price v. Symsek,
988 F.2d 1187, 26 USPQ2d 1031 (Fed. Cir. 1993). An applicant
cannot show that it is entitled to judgment vis-à-vis the
patentee unless, as a minimum, a case for that judgment is
established by a preponderance of the evidence standard, the
lowest standard of proof generally recognized in civil matters.
Application of some lesser, undefined standard would make summary
judgment proceedings less objective and, to some extent, would
undermine the purpose of the summary judgment proceedings.
We believe the appropriate evidentiary standard to be
applied in determining whether an applicant has met its prima
facie burden is preponderance of the evidence, or where the
applicant's effective filing date is after the issue date of the
patent, clear and convincing evidence.

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Application of the above-noted evidentiary standard does no
violence to the phrase "prima facie" as it appears in the rules.
Rather, the phrase "prima facie" in 37 CFR § 1.608(b) and 37 CFR
§ 1.617 is a recognition, when read with other provisions of the
rules, that only the applicant is to present evidence to make out
its case. Application of the preponderance of the evidence
standard to showings under 37 CFR § 1.608(b) should not impose an
unwarranted burden on an applicant. To prove a fact by a
preponderance of the evidence simply means that when all relevant
evidence is considered, a fact alleged by an applicant is more
likely true than not. In a summary judgment proceeding in a
patent interference, generally there is no evidence "against" the
applicant inasmuch as the applicant presents all the relevant
evidence. Accordingly, in a patent interference proceeding, a
summary judgment determination boils down to whether the
applicant has prima facie established facts, by a preponderance
of the uncontested evidence, that would entitle the applicant to
a judgment as a matter of law if the patentee relies on its
filing date and presents no evidence in rebuttal. Application of
any other evidentiary standard at the summary judgment stage
would mean that an applicant might not prevail at final hearing
even if (1) the applicant relies on the same evidence presented
with the Rule 608(b) showing and (2) the patentee relies on its
filing date and presents no evidence in rebuttal.

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I.
Are facts alleged in an affidavit accepted as true?
The answer is generally "yes." In an opinion in Schendel v.
Curtis, supra, a suggestion was made that allegations in an
applicant's Rule 608(b) affidavits should be assumed to be true.
83 F.3d at 1406, 38 USPQ2d at 1749 (Newman, J., dissenting).
Judge Newman's suggestion is believed to be consistent with
statements in the CCPA's opinion in Kahl v. Scoville, 609 F.2d
991, 995, 203 USPQ 652, 656 (CCPA 1979). The Schendel majority
did not address the question of whether facts alleged in an
affidavit should be accepted as true: "[b]ecause Schendel did
not argue for such a rule, either before the board on appeal [to
the Federal Circuit], we [therefore] decline to decide whether
such a rule is appropriate." 83 F.3d at 1405 n.8 last sentence,
38 USPQ2d at 1748 n.8 last sentence.
The day-to-day practice at the board in evaluating Rule
608(b) affidavits has been that, absent a good reason, facts
alleged in an affidavit are accepted as true.
What would be a "good reason" for not accepting an
allegation of fact as true?
Suppose the circumstances are that an applicant alleges in a
first affidavit that the applicant personally mixed A with B for
the first time on May 4, 1997, while a corroborating witness
alleges in a second affidavit that the applicant was observed

- 23 -
mixing A and B on May 1, 1997. Under these circumstances, a
determination would be made as to whether the difference between
the applicant's allegation and the corroborating witness'
allegation is material, and, if so, whose allegation most likely
represents the correct statement of events. Another example
might be where an applicant makes an allegation in a Rule 608(b)
affidavit which is inconsistent with statements in the
applicant's specification. The APJ and/or the merits panel would
then weigh the applicant's allegation against the statement in
the specification to determine whether the applicant's allegation
is true. Experience at the board is that there have been, and
should be, few occasions when a fact alleged in an affidavit is
not accepted as true.
It is important, however, to distinguish between an
allegation of a "fact" in a Rule 608(b) affidavit, such as an
allegation as to when a particular event took place, and an
allegation in the nature of a conclusion of law. For example, in
a case where an applicant is attempting to establish a prima
facie case of diligence, affidavit statements by the applicant
and a corroborating witness that particularized events took place
on specific days would be accepted as true. An allegation by the
applicant and/or the corroborating witness that the applicant
"diligently" sought to actually or constructively reduce to
practice an invention during the month of April, without other
fact details, would not be accepted as a statement of fact since

- 24 -
the allegation is an expression of opinion on an issue of law.
Golota v. Strom, 489 F.2d 1287, 1292 n.5, 180 USPQ 396, 400 n.5
(CCPA 1974).
II.
Findings of fact
The record in this interference supports, by a preponderance
of the evidence, the following findings.
The parties
1. This interference involves a junior party
applicant and a senior party patentee.
2. The junior party applicant is Garo Basmadjian
and Stanley L. Mills (Basmadjian). Basmadjian is involved in the
interference on the basis of two patent applications (Paper
No. 1, pages 13-14):
a. "Parent" patent application 07/976,584, filed
November 13, 1992, entitled "Vaccines for
immunization against drugs of abuse," and
b. "Continuing" patent application 08/451,698,
filed May 26, 1995, also entitled "Vaccines
for immunization against drugs of abuse."
3. Basmadjian's "continuing" application has been
accorded the benefit of his "parent" application for the purpose
of priority (Paper No. 1, page 14).

- 25 -
4. The real party in interest insofar as Basmadjian
is concerned is The Board of Regents of the University of
Oklahoma (Paper No. 5)
5. The senior party patentee is Donald W. Landry and
Kang Zhao (Landry). Landry is involved in the interference on
the basis of U.S. Patent Nº 5,463,028, granted October 31, 1995,
based on application 07/862,801, filed April 3, 1992 (Paper
No. 1, page 15). The title of the patent is "Reagents for
generating a polyclonal hydrolytic antibody response against
cocaine and the monoclonal hydrolytic antibodies against cocaine
derived through these reagents." Id.
6. The real party in interest insofar as Landry is
concerned is The Trustees of Columbia University in the City of
New York (Paper No. 9).
Basmadjian's invention
7. A full understanding of the invention is not
necessary for resolution of the issues before us. Briefly,
however, applicants state (Basmadjian parent specification,
pages 5-6):
Addiction to cocaine has been unresponsive to most
nonpharmacological treatment approaches. Recently
there has been a flurry of clinical trials of
pharmacotherapeutic agents against cocaine addiction
***. Clinical studies have evaluated the efficacy of a

- 26 -
number of drugs, such as buprenorphine, carbamazepine,
desipramine, mazindol, flupenthixol, nifedipine, and
amantadine for the treatment of cocaine addiction.
* * * * *
Clearly, the problem of abuse of cocaine and other
psychotropic drugs such as heroin and its derivatives has
reached a critical level. A technique effective in
combatting such abuse would be of enormous benefit.
* * * * *
The present invention is a vaccine [and a compound to
be used in the vaccine] comprising an immunogenic peptide or
protein conjugated to a non-immunogenic molecule such as an
analog of a psychotropic drug which can be used in mammals,
including humans, to stimulate catalytic antibody production
for metabolizing drugs, such as cocaine and heroin, which
have psychotropic effects.
8. Claim 103 of the Basmadjian parent application
reads:
Claim 103. A compound having the formula:

- 27 -
or any pharmaceutically acceptable salt or ester thereof, in
which:
R is a hydrogen atom, or a methyl group;	1
R is a carboxyl group, or a carboxymethyl group; and	2
R is a hydrogen atom, an amino group or a modified	3
amine group.
9. Claim 6 of the Basmadjian continuing application
reads:
Claim 6: A vaccine, comprising:
an analog-carrier conjugate formed by the conjugation
of a non-immunogenic analog of cocaine to an
immunogenic carrier molecule, the analog-carrier
conjugate, when administered to a mammal in a
pharmaceutically effective dosage, causing
production in the mammal of catalytic antibodies
which are effective in causing the catalysis of
cocaine, and wherein the non-immunogenic analog is
a compound having the formula:

- 28 -
or any pharmaceutically acceptable salt or ester
thereof, in which:
R is a hydrogen atom, or a methyl group;	1
R is a carboxyl group, or a carboxymethyl group;	2
and
R is a hydrogen atom or a group which can be	3
activated to link the cocaine analog to the
immunogenic carrier.
10. Claim 23 of the Basmadjian continuing application
reads:
Claim 23. A method for causing in a mammal the in vivo
production of catalytic antibodies which are effective in
causing the catalysis of cocaine, comprising:
administering a pharmaceutically effective dosage of a
vaccine to the mammal, the vaccine further
comprising an analog-carrier conjugate formed by
the conjugation of a non-immunogenic analog of

- 29 -
cocaine to an immunogenic carrier molecule, the
non-immunogenic analog having the formula:
or any pharmaceutically acceptable salt or ester
thereof, in which:
R is a hydrogen atom, or a methyl group;	1
R is a carboxyl group, or a carboxymethyl group;	2
and
R is a hydrogen atom, or a group which can be	3
activated to link the cocaine analog to the
immunogenic carrier.
The count and claims corresponding to the count
11. There is one count in the interference, Count 1,
which reads:
Count 1
A compound according to claim 103 of the Basmadjian
'584 application [i.e., the Basmadjian parent application],
or

It is noted that claims 24-35 of Basmadjian '698 appear to be improper	1
dependent claims since claim 23 is not directed to a "non-immunogenic analog"
(rather claim 23 is directed to a process).
- 30 -
a vaccine according to claim 6 of the Basmadjian '698
application [i.e., the Basmadjian continuing application],
or
a method according to claim 23 of the Basmadjian '698
application,1
or
a method according to claim 38 of the Basmadjian '698
application,
or
a compound according to claim 1 of the Landry patent,
or
a compound according to claim 6 of the Landry patent,
or
a compound according to claim 7 of the Landry patent,
or
a compound according to claim 8 of the Landry patent.
12. The claims of the parties which correspond to
count 1 are:
Basmadjian parent: 103-112 and 114-115
Basmadjian continuing: 6-38
Landry: 1-9
13. The claims of the parties which do not correspond
to count 1 are:

- 31 -
Basmadjian parent: None
Basmadjian continuing: None
Landry: 10-11
Basmadjian's Rule 608(b) showing and explanation
14. Basmadjian filed Rule 608(b) showings in both his
"parent" (Paper No. 27, filed August 19, 1996) and "continuing"
(Paper No. 6, filed August 19, 1996) applications. Apart from
references to specific claims, in most other material respects,
the Basmadjian Rule 608(b) showings are essentially the same.
15. According to Basmadjian, his invention was
conceived prior to the filing date (April 3, 1992) of the
application which matured into the Landry patent. Basmadjian
further alleged diligence from a date prior to Landry's filing
date to a subsequent "reduction to practice."
16. The relevant time period in which Basmadjian
was required to show reasonable continuous diligence is from
(1) prior to April 3, 1992, through
(2) November 13, 1992, when his "parent"
application was filed.
17. As part of his Rule 608(b) showing, Basmadjian
alleged that there was an ongoing dispute regarding inventorship
with personnel of the Oklahoma Medical Research Foundation
(OMRF). Basmadjian further alleged the dispute precluded
obtaining and filing of affidavits by Dr. Morris Reichlin and
Dr. Eugene Koran. According to Basmadjian, both Morris and Koran
could corroborate certain work performed on behalf of Basmadjian.

- 32 -
18. Basmadjian filed four declarations:
a. his own;
b. a declaration of Dr. O. Ray Kling;
c. a declaration of Charles A. Codding, Esq.;
and
d. a declaration of Dr. Mangesh Kanvinde.
19. In his own declaration, Basmadjian states that he
prepared an invention disclosure (Exhibit 1) and submitted the
invention disclosure to the Office of the Vice Provost for
Research for the University of Oklahoma Health Sciences Center.
Basmadjian declaration, ¶ 3.
20. The Basmadjian declaration discusses many events
which took place prior to Landry's filing date (April 3, 1992).
Basmadjian declaration, ¶¶ 4-13.
21. Exhibit 13 of the Basmadjian declaration is a copy
of a page of a laboratory notebook.
22. Basmadjian discusses Exhibit 13 as follows:
Exhibit 13 shows a log of the testing of two rabbits
immunized with BSA-TSA-I which occurred from March 26,
1992 through October 5, 1992.
Basmadjian declaration, ¶ 14.
23. BSA means bovine serum albumin. Basmadjian
declaration, ¶ 10.

- 33 -
24. BSA (bovine serum albumin) which has been
conjugated to a transition state analog of cocaine is referred to
by Basmadjian as TSA-1. Basmadjian declaration, ¶ 4.
25. Basmadjian's BSA-TSA-1 conjugate uses a compound
within the scope of claim 103 of the "parent" application.
26. TSA was also referred to as TCA, meaning
transition cocaine analog. Basmadjian declaration, ¶ 9.
27. TCA-2 is another way in which Basmadjian refers to
BSA-TSA-1. Basmadjian declaration, ¶ 10.
28. Exhibit 14 is said to show "immunizations of
rabbits with conjugated TSA's in April 1992." Basmadjian
declaration, ¶ 15.
29. Exhibit 15 is said to show "experiments conducted
on May 14 and 15, 1992 aimed at analyzing the catalytic activity
of several fractions of sera." Basmadjian declaration, ¶ 16.
30. There is no particularized discussion or
explanation in the Basmadjian declaration of the significance of
the various entries in Exhibit 13.
31. In addition to the absence of particularized
discussion or explanation concerning the entries in Exhibit 13,
the Basmadjian Rule 608(b) showing does not identify who
performed the experiments recorded in, or who made the entries
found on, Exhibit 13.

- 34 -
32. Exhibit 13 mentions the following events,
apparently involving two rabbits: Rabbit # 403 NZW and
Rabbit # 404 NZW:
a. Mar. 26, 1992 Pre-bleed
b. Mar. 26, 1992 Immunization of TCA-2 BSA
c. Apr. 01, 1992 Immunization of TCA-2 BSA
d. Apr. 10, 1992 Rabbits bled
e. Apr. 29, 1992 Injection via ear
f. May 06, 1992 Bleed ~ 30 cc
g. May 07, 1992 Bleed ~ 30 cc
h. June 16, 1992 Injection via ear
i. June 25, 1992 Bleed ~ 45 cc
j. June 26, 1992 Bleed ~ 50 cc
k. June 29, 1992 Bleed ~ 30 cc
l. Sep. 28, 1992 Boost via ear
m. Oct. 05, 1992 Exsanguinate: sacrifice
33. Basmadjian does not explain in his declaration
what events, if any, took place between June 29, 1992 and
September 28, 1992, a period of 91 days, or about 3 months.
34. Basmadjian does not explain in his declaration
what events, if any, took place between October 5, 1992, and
November 13, 1992, a period of 39 days.
35. In his declaration, Kling acknowledges receiving
the Basmadjian invention disclosure (Exhibit 1) on or about
July 1, 1990. Kling declaration, ¶ 4.

- 35 -
36. The Kanvinde declaration makes the following
relevant allegations:
a. Kanvinde "was a doctoral student in the lab
of *** Basmadjian *** from 1987 to 1992" (Kanvinde declaration,
¶ 2).
b. Kanvinde has "reviewed the Declaration of ***
Basmadjian which details lab procedures, syntheses and
experiments relating to the synthesis of transition state analogs
of cocaine which were conducted within the lab of *** Basmadjian"
(Kanvinde declaration, ¶ 3).
c. Kanvinde attests "that the activities
described in the Declaration of *** Basmadjian and the exhibits
attached to the Declaration are true and that they did occur.
Also, on several occasions during this period I transferred
samples of the transition state analogs to the Mass Spectrometry
Lab at the Chemistry Department of the University of Oklahoma for
analysis" (Kanvinde declaration, ¶ 4).
37. Kanvinde does not describe with particularity any
of the events mentioned in Basmadjian Exhibit 13.
38. The Codding declaration contains the following
allegations:
a. Codding is patent counsel for the University
of Oklahoma Health Sciences Center. Codding declaration, ¶ 1.
b. "I have requested in the past that the
Oklahoma Medical Research Foundation (OMRF) make Dr. Morris

- 36 -
Reichlin and Dr. Eugene Koran available for depositions and/or to
discuss their work and Dr. Garo Basmadjian's work at OMRF
between February 1992 and September 1992. This request has been
refused." Codding declaration, ¶ 2.
c. "I believe that Drs. Reichlin and Koran can
corroborate the work done by Dr. Basmadjian and work done with
Dr. Basmadjian's assistance while at OMRF between February 1992
and September 1992." Codding declaration, ¶ 3.
39. Neither Basmadjian nor Codding state in their
respective declarations what work was done by Basmadjian at OMRF
between February and September of 1992. Nor do the Basmadjian
and Codding declarations describe with particularity any work
done with Basmadjian's "assistance."
The order to show cause
40. The Basmadjian Rule 608(b) showing was reviewed by
an APJ. A determination was made that the Rule 608(b) showing
failed to make out a prima facie case that Basmadjian was
entitled to a judgment vis-à-vis Landry. Hence, an order
to show cause (Paper No. 2) was issued pursuant to 37 CFR
§ 1.617(a). The following appears in a "Discussion" section
of the order to show cause (Paper No. 2, pages 3-7):
According to Basmadjian, "the invention was
conceived of by the Applicants prior to the filing date
of the Landry et al. patent (April 3, 1992) and . . .
Applicants were diligent in reducing the claimed

- 37 -
invention to practice from a date prior to the filing
of the Landry et al. patent application." RESPONSE,
page 2. A similar statement appears in the paragraph
bridging pages 2 and 3 in the RESPONSE TO REJECTIONS
AND SHOWING UNDER 37 C.F.R. § 1.608(b).
The "explanation" does not state with any particularity
what is meant by "reduction to practice." Reduction to
practice can mean (1) actual reduction to practice or
(2) constructive reduction to practice. No allegation of an
"actual reduction to practice" has been found in any part of
the papers filed by Basmadjian under 37 CFR § 1.608(b). On
this record, and for the purpose of evaluating the showing
under 37 CFR § 1.608(b), it will be assumed that Basmadjian
is entitled to a constructive reduction to practice of
November 13, 1992--the date the Basmadjian '584 ["parent"]
application was filed. See paragraph 17 on page 4 of the
Basmadjian declaration.
Accordingly, the issues for evaluation are two:
(a) Did Basmadjian conceive prior to April 3,
1992, the date the Landry application which matured into the
Landry patent was filed?
(b) Did Basmadjian act with reasonable continuous
diligence from:
(i) a date prior to April 3, 1992 until

- 38 -
(ii) his constructive reduction to practice
on November 13, 1992?
The papers are sufficient to prima facie establish
that, prior to April 3, 1992, Basmadjian conceived the
invention defined by Count 1. However, the papers are not
sufficient to prima facie establish reasonable continuous
diligence as required by law.
The provisions of 37 CFR § 1.608(b) require that "[a]ny
printed publication or other document which is not
self-authenticating shall be authenticated and discussed
with particularity in an affidavit." The various
declarations submitted with the Basmadjian showing under
37 CFR § 1.608(b) contain, at best, merely cursory
statements about what each exhibit is supposed to show.
Exhibit 13 is of some interest because it appears to
lay out the best, albeit an insufficient, case for
reasonable continuous diligence during the time period from
April 1992 through September 1992. Basmadjian apparently
believes that an act having some relevance to diligence took
place on 4-1-92 ( *** April 1, 1992). Presumably,
Basmadjian believes that other relevant acts took place on
the following dates:
1. April 10, 1992;
2. April 29, 1992;
3. May 6, 1992;

- 39 -
4. May 7, 1992;
5. June 16, 1992;
6. June 25, 1992;
7. June 26, 1992;
8. June 29, 1992;
9. September 28, 1992; and
10. October 5, 1992.
Basmadjian ["parent"] patent application '584 was filed
on November 13, 1992.
There is no cogent explanation why the acts which took
place on the ten days noted above, as well as November 13,
1992, constitute reasonable continuous diligence. It seems
as though counsel for Basmadjian has filed very superficial
declarations in the Patent and Trademark Office, accompanied
by unexplained laboratory notebooks, hoping that somehow the
declarations and notebooks establish reasonable continuous
diligence. The burden of proving a prima facie case of
reasonable continuous diligence is on Basmadjian. Stated in
other terms, neither the Patent and Trademark Office nor
Landry have to prove lack of diligence.
Apart from the fact that the events are not "discussed
with particularity" in any of the declarations filed in the
Patent and Trademark Office, there is a rather large gap
between June 29, 1992, and September 28, 1992, which is
simply not explained.2

- 40 -
))))))))) C )))))))))
Footnote 2 stated:
On this record, the events recited in Exhibit 13
are not corroborated. For the purpose of
evaluation under 37 CFR § 1.617(a), it will be
assumed that events which occurred between
February 1992 and September 1992 would have been
corroborated by Dr. Morris Reichlin and Dr. Eugene
Koran of the Oklahoma Medical Research Foundation
had they be willing to submit declarations. See
the Codding declaration. If the interference
survives the summary judgment phase, then perhaps
Dr. Morris and Dr. Koran can be compelled to give
testimony as hostile witnesses. See 37 CFR
§ 1.671(g) and 35 U.S.C. § 24.
[end of footnote]
))))))))) C )))))))))
There is a second gap which is not explained or
corroborated. The second gap is the time period from
(1) September 28, 1992 (see next to last line of Exhibit 13)
to (2) November 13, 1992. The Codding declaration does not
purport to say that Dr. Reichlin and/or Dr. Koran could
provide any corroboration for acts which occurred during the
second large gap. Based on paragraph 17 on page 4 of the
Basmadjian declaration, apparently one is to assume that a

- 41 -
patent application was diligently prepared, signed and
forwarded to the Patent and Trademark Office during the time
period which I refer to as the "second gap." Interestingly
enough, nothing is said in the Codding declaration about
what steps were taken to prepare a patent application and
the dates when those steps took place. Yet the Codding
declaration is where one would expect to find the details of
acts associated with preparing, signing and filing a patent
application.
A time will be set for Basmadjian to file a "response"
(37 CFR § 1.617(b)) to the order to show cause, for Landry
to file a "statement" (37 CFR § 1.617(d)) and for Basmadjian
to file a "reply" (37 CFR § 1.617(e)).
41. Basmadjian was expressly advised of the "good
cause" requirement in the event additional evidence was to be
presented in response to the order to show cause (Paper No. 2,
pages 7-8).
Basmadjian's response to the order to show cause
42. Basmajian timely responded to the order to show
cause. RESPONSE UNDER 37 C.F.R. § 1.617(B) TO THE ORDER TO SHOW
CAUSE (Paper No. 12).
43. Basmadjian's response:
a. does not appear to argue that the basis upon
which the order to show cause was issued is erroneous;

- 42 -
b. presents "[a]dditional evidence further
documenting diligence between April 3, 1992 and November 13, 1992
***" in the form of Basmadjian Exhibits 16 through 37; and
c. maintains that there is good cause why
the additional evidence was not presented with the original
Rule 608(b) showing.
44. Basmadjian Exhibit 16 is a second declaration
by Basmadjian. Basmadjian Exhibit 34 is a declaration by
Dr. Christopher W. Corbett, an employee in the Dunlap and
Codding firm owned by Codding. Basmadjian Exhibit 37 is a second
declaration of Codding.
45. The following arguments were made with respect to
why there is good cause for submitting additional evidence.
a. The additional "evidence could not be
corroborated by the OMRF employees due to the ongoing dispute"
(Paper No. 12, page 3) (the ongoing dispute is discussed in
Findings 17 and 38, supra).
b. The "evidence is not complete in describing
the activities from April through July. These deficiencies could
be cleared up by the testimony of Reichlin and Koran" (Paper
No. 12, page 3).
c. The additional evidence "for all intents and
purposes, appeared to be cumulative of the evidence which was
originally provided under 37 C.F.R. § 1.608(b) in Exhibits 13-15"
(Paper No. 12, page 3).

- 43 -
d. The additional evidence "shows other
activities which occurred between July and September. These data
were not originally included because [Basmadjian] Exhibit 13 was
inclusive of the same time period. These data were originally
and still [are] considered to be cumulative of the data in
[Basmadjian] Exhibit 13" (Paper No. 12, page 4).
e. "The reason counsel did not provide the
detailed explanation provided now in the Corbett Declaration
([Basmadjian] Exhibit 34) is that counsel believed that the brief
period of time between the sacrificing of the rabbits on
October 5, 1992 ([Basmadjian] Exhibit 13, which marked the end
of that phase of experiment work on the invention), and the
November 13, 1992 filing date did not raise a question as to
diligence or date of conception. Counsel respectfully submits
that anyone who has ever prepared a chemical patent application
of the nature of the one presently under consideration [, i.e.,
the Basmadjian parent application,] would agree that five weeks
from start to finish constitutes reasonable diligence" (Paper
No. 12, page 6).
46. The Rule 608(b) showing does not identify any date
on which preparation of a patent application was first authorized
or began.

- 44 -
Landry statement
47. Landry timely filed a statement. STATEMENT OF
SENIOR PARTY LANDRY UNDER 37 C.F.R. § 1.617(d) COMMENTING ON
RESPONSE OF JUNIOR PARTY BASMADJIAN TO THE ORDER TO SHOW CAUSE
(Paper No. 19).
48. Landry argues that the additional evidence
submitted by Basmadjian should be "stricken," Basmadjian having
failed to provide a showing of good cause why the additional
evidence was not earlier presented (Paper No. 19, pages 3-4).
49. Landry correctly notes that "there is no showing
that the documents submitted with these [additional] declarations
were not available earlier" (Paper No. 19, page 4).
Basmadjian reply
50. Basmadjian timely filed a reply. REPLY UNDER 37
C.F.R. 1.617(e) TO THE ORDER TO SHOW CAUSE (Paper No. 21).
51. Basmadjian's reply:
a. argues that "[t]he original material supplied
in *** Basmadjian's [Rule 608(b)] showing *** provides a prima
facie showing that *** Basmadjian *** diligently worked to reduce
his invention to practice ***" (Paper No. 21, page 9);
b. presents still further additional evidence in
the form of Basmadjian Exhibits 38 through 40; and
c. makes additional arguments that there is good
cause why the additional evidence was not presented with the
original Rule 608(b) showing.

- 45 -
52. Basmadjian Exhibit 38 is a second declaration by
Corbett.
53. The following arguments are made in Basmadjian's
reply with respect to why there is good cause for submitting
additional evidence.
a. There was continued mention of personnel at
OMRF. Basmadjian repeated his view that "at least two employees
of OMRF [can] corroborate *** Basmadjian's testimony ***" (Paper
No. 21, page 5). For the first time in the interference,
Basmadjian's counsel argues that:
it is more likely than not that they may be able
to disclose independent acts of significance as
well as documentary evidence as to ***
Basmadjian's diligence in reducing to constructive
practice. See First Codding Declaration
[submitted with Basmadjian's Rule 608(b) showing].
(Paper No. 21, page 5). Basmadjian's counsel further argues
(Paper No. 21, page 7):
It must be pointed out, however, that these witnesses
[, i.e., personnel at OMRF,] may also be able to
supplement the testimony of *** Basmadjian with
(1) additional independent acts of significance,
(2) testimony of experiments or procedures conducted,
and (3) documentary evidence of experiments or
procedures conducted (See First Codding Declaration).

- 46 -
Basmadjian's counsel still further argues (Paper No. 21,
pages 7-8):
In this interference, necessary testimony as to
diligence can only be obtained through subpoenas during
the discovery phase.
b. The additional evidence was not earlier
submitted because "it was *** reasonably believed to be
cumulative of the evidence submitted" with the Rule 608(b)
showing (Paper No. 21, page 6).
c. The additional evidence was not earlier
submitted "because the material [, apparently a reference to
additional evidence,] could not have been corroborated because of
the ongoing dispute between Oklahoma University Health Sciences
Center and the Oklahoma Medical Research Foundation" (OMRF)
(Paper No. 21, page 6).
III.
Discussion
A.
Prima facie case based on Basmadjian's Rule 608(b) showing
For the purpose of summary judgment, we assume that
Basmadjian conceived the invention prior to April 3, 1992. While
it was not entirely clear based on the Rule 608(b) showing, it
appeared that Basmadjian bottomed his prima facie case on
conception prior to Landry's filing date coupled with reasonable

- 47 -
diligence from a date prior to Landry's filing date until a
constructive reduction to practice by Basmadjian. Basmadjian's
response and reply do not rely on any actual reduction to
practice. Under applicable precedent, Basmadjian was required to
establish a prima facie case of reasonable diligence from prior
to Landry's filing date (April 3, 1992) until Basmadjian's
constructive reduction to practice (November 13, 1992). Griffith
v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d 1361, 1362 (Fed. Cir.
1987); Gould v. Schawlow, 363 F.2d 908, 911, 150 USPQ 634, 637
(CCPA 1966).
In his Rule 608(b) showing, Basmadjian did not discuss any
of the laboratory notebook entries with "particularity in an
affidavit." 37 CFR § 1.608(b). Hence, we do not know the
significance of entries in those laboratory notebooks. Apart
from Basmadjian's failure to explain the entries in the
laboratory notebooks, based on our consideration of Basmadjian
Exhibit 13, and consistent with the issues raised in the order to
show cause, Basmadjian's Rule 608(b) showing failed to show
reasonable diligence during two time periods ("gaps") between
April 3, 1992, through November 13, 1992. Those two gaps are:
(1) June 29, 1992 through September 27, 1992; and
(2) October 5 through November 12, 1992.
Since Basmadjian failed to describe the activity in
Basmadjian Exhibit 13 with any particularity, and failed to show
what activity, if any, took place during these two gaps,

- 48 -
Basmadjian did not make out a prima facie case of diligence in
his Rule 608(b) showing.
B.
Basmadjian's arguments and additional evidence
We have considered, individually and collectively, all
of Basmadjian's arguments, including those in support of his
contention that there is good cause for the submission of
additional evidence. The additional evidence consists of
Basmadjian Exhibits 16 through 40, the latter three exhibits
having been filed with Basmadjian's reply.
We hold that Basmadjian has not overcome the order to show
cause. Nor has Basmadjian established good cause within the
meaning of 37 CFR § 1.617(b) for the filing of additional
evidence. Hence, Basmadjian's additional evidence will not be
considered.
1.
The "ongoing" dispute
Basmadjian argues that there is good cause to submit
additional evidence because the "evidence could not be
corroborated by the OMRF employees due to the ongoing dispute"
(Paper No. 12, page 3). See also Paper No. 21, page 6. None of
the additional declarations or documentary evidence is alleged to
have been supplied by OMRF employees after the Rule 608(b)
showing was filed in the Patent and Trademark Office. The
additional evidence includes declarations of Basmadjian (Exhibit

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16), Corbett (Exhibits 34 and 38) and Codding (Exhibit 37). None
of these individuals is identified as being associated with OMRF.
The remaining additional evidence is documentary evidence, none
of which is alleged to have been unavailable when the Rule 608(b)
showing was filed.
2.
Basmadjian's relationship with OMRF personnel
Basmadjian maintains (Paper No. 12, page 3) that the Rule
608(b) showing "is not complete in describing the activities from
April through July. These deficiencies could be cleared up by
the testimony of Reichlin and Koran." How? The Rule 608(b)
showing did not sufficiently describe (1) the precise
relationship between Basmadjian and personnel of OMRF, (2) the
nature of the dispute, (3) what Basmadjian himself did while
associated with OMRF, (4) how Basmadjian believes he was assisted
by Reichlin and/or Koran, and/or (5) what testimony could be
expected from Reichlin and/or Koran. Furthermore, if the Rule
608(b) showing was "not complete" and if the additional evidence
renders the showing "complete," then it is curious that the
following documents were not submitted with, and the
entries therein explained in, the Rule 608(b) showing:
a. Exhibit 17 (dated April 10, 1992)
b. Exhibit 18 (dated April 14, 1992)
c. Exhibit 19 (dated April 14-15, 1992)
d. Exhibit 20 (dated April 20, 1992)

There is some question whether the date is July 17 or 19, because the	2
date is handwritten and the handwriting is not clear.
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e. Exhibit 21 (dated April 21, 22 and 23, 1992)
f. Exhibit 22 (dated April 27 and 28, 1992)
g. Exhibit 23 (dated April 29 and May 6 and 8,
1992)
h. Exhibit 24 (dated May 11, 1992)
i. Exhibit 25 (dated May 13, 15, 26 and 27 and
June 1, 8 and 9, 1992)
j. Exhibit 26 (dated June 8, 11, 15, 17-18,
22-25 and 28-30, 1992, July 1, 9, 10 and 15
and one date over a period June 8-19, 1992)
k. Exhibit 27 (dated July 15, 19, 20, 21	2
and 22, 1992)
l. Exhibit 28 (dated July 25, 1992).
m. Exhibit 29 (dated August 28, 1992)
n. Exhibit 30 (dated September 2, 1992)
o. Exhibit 31 (dated September 15, 1992)
p. Exhibit 32 (dated September 25, 1992)
q. Exhibit 33 (dated September 9, 11, 14, 16,
18, 23, 25 and 28 and October 2 and 5, 1992)
r. Exhibit 35 (dated October 5, 1992)
s. Exhibit 36 (attorney diary form October 9,
14, 15, 19-23 and 26-30 and November 2-6
and 11, 1992)

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t. Exhibit 39 (attorney diary for various dates
between July 1 and September 30, 1992)
u. Exhibit 40 (attorney reports for July,
August, September and October of 1992)
We have, and will not, consider the additional documentary
evidence on its merits. Suffice it to say, there is no
indication that the additional documentary evidence could not
have been submitted with Basmadjian's Rule 608(b) showing.
3.
The additional evidence is cumulative
Basmadjian, through counsel, maintains that "for all intents
and purposes, [the additional evidence] appeared to be cumulative
of the evidence which was originally provided under 37 C.F.R.
§ 1.608(b) in Exhibits 13-15" (Paper No. 12, page 3). See also
Paper No. 21, page 6. Quite frankly, we do not know what to make
of counsel's argument, which was made both in the response and
the reply. If the additional evidence is cumulative, why is it
being submitted at all?
4.
Other activities during July through September
Basmadjian suggests that the additional evidence:
shows other activities which occurred between July
and September. These data were not originally
included because [Basmadjian] Exhibit 13 was
inclusive of the same time period. These data

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were originally and still [are] considered to be
cumulative of the data in [Basmadjian] Exhibit 13.
(Paper No. 12, page 4).
The time for having submitted evidence related to other
activities, assuming those activities are somehow relevant on the
issue of diligence, was when the Rule 608(b) showing was filed.
5.
Diligence in preparing an application
Counsel argues:
The reason counsel did not provide the
detailed explanation provided now in the
Corbett Declaration ([Basmadjian] Exhibit 34)
is that counsel believed that the brief
period of time between the sacrificing of the
rabbits on October 5, 1992 ([Basmadjian]
Exhibit 13, which marked the end of that
phase of experiment work on the invention),
and the November 13, 1992 filing date did not
raise a question as to diligence or date of
conception. Counsel respectfully submits
that anyone who has ever prepared a chemical
patent application of the nature of the one
presently under consideration [, i.e., the
Basmadjian parent application,] would agree

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that five weeks from start to finish
constitutes reasonable diligence.
(Paper No. 12, page 6).
In the order to show cause a view was expressed that
"apparently one is to assume that a patent application was
diligently prepared, signed and forwarded to the Patent and
Trademark Office during the time period" September 28, 1992,
through November 13, 1992 (emphasis in quote added). However, in
the Rule 608(b) showing there is no clear statement as to when
preparation of a patent application was authorized or began. The
Rule 608(b) does not rule out a possibility that preparation of
the application began prior to October 5, 1992. Hence, based on
the Rule 608(b) showing, we cannot say Basmadjian or his counsel
were diligent in preparing a patent application during the period
from October 5, 1992, through November 13, 1992. The date for
beginning the preparation of a patent application appears in the
record, and vaguely at that, for the first time with the
additional evidence. Counsel (1) would have us assume the
preparation of the application began soon after October 5 and
(2) seems to argue that preparation, signing and filing of a
patent application in this field in a period of five weeks is per
se diligence. We do not favor per se rules, preferring instead
to evaluate each case on its own facts. Whatever the merits of
counsel's argument for a rule that 5 weeks is per se diligent,

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the argument is plainly bottomed on additional evidence and not
on the rule 608(b) showing.
6.
OMRF personnel and independent acts
In what can only be characterized as an afterthought, for
the first time in Basmadjian's reply, Basmadjian's counsel argues
that "it is more likely than not that they may be able to
disclose independent acts of significance as well as documentary
evidence as to *** Basmadjian's diligence in reducing to
constructive practice. See First Codding Declaration [submitted
with Basmadjian's Rule 608(b) showing]" (Paper No. 21, page 5).
Basmadjian's counsel further argues (Paper No. 21, page 7):
It must be pointed out, however, that these
witnesses [, i.e., personnel at OMRF,] may
also be able to supplement the testimony of
*** Basmadjian with (1) additional
independent acts of significance,
(2) testimony of experiments or procedures
conducted, and (3) documentary evidence of
experiments or procedures conducted (See
First Codding Declaration).
Basmadjian's counsel still further argues (Paper No. 21,
pages 7-8):

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In this interference, necessary testimony as
to diligence can only be obtained through
subpoenas during the discovery phase.
There are several independent difficulties with counsel's
argument.
a.
The argument was made for the first time in a reply
The argument was made for the first time in a reply. A
careful review of the Codding declaration will reveal that it
says only two things. First, Codding tried without success to
talk to Reichlin and Koran to discuss their work at OMRF and
Basmadjian's work at OMRF during the period February through
September 1992. Codding declaration, ¶ 2. Second, it continues
with a statement that Codding believes that Reichlin and Koran
can corroborate work done by and with the assistance of
Basmadjian in the period February through September 1992.
Codding declaration, ¶ 3. A fair reading of the Codding
declaration is that Codding would have liked to have talked with
Reichlin and Koran to obtain evidence to corroborate activities
by, and with the assistance of, Basmadjian. The lack of ability
to corroborate continued to be a theme in Basmadjian's response
to the order to show cause ("the evidence could not be
corroborated by the OMRF employees due to the ongoing dispute
***." (Paper No. 12, page 3)). But, the order to show cause
assumes that Reichlin and Koran could corroborate Basmadjian's

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work, however vaguely that work was set out in the Rule 608(b)
showing.
It is in the reply that counsel argues for the first time
that Reichlin and Koran "more likely than not" may be able to
disclose independent acts of significance (Paper No. 21, page 5).
Arguments made for the first time in a reply are not entitled to
be considered.
b.
The record fails to proffer with any particularity
the nature of any testimony to be given by OMRF personnel
There has never been presented in this record a cogent
statement of what evidence might reasonably have been expected
from personnel at OMRF over-and-above corroboration of work done
by Basmadjian. As noted earlier, in issuing the order to show
cause, it was assumed that OMRF personnel could "corroborate"
activity by Basmadjian. Presumably, Basmadjian knows what he did
which OMRF personnel could corroborate. Hence, an assumption
that OMRF could corroborate activity by Basmadjian was entirely
reasonable.
Now it is contended that there may be "independent acts"
relevant to proving diligence by, or on behalf of, Basmadjian.
The meaning of the language "independent acts" is utterly vague
and we have not been told that it is supposed to mean. What are
the nature of those acts? Why did Basmadjian not allege in the
Rule 608(b) showing that OMRF personnel might testify to

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independent acts and proffer some idea of what those acts might
be? The Rule 608(b) showing does not purport to say that a
third-party worked apart from, but on behalf of Basmadjian.
Rather, the Rule 608(b) showing gives the definite impression
that Basmadjian did, or assisted in, all relevant work toward an
actual reduction to practice of the invention. There was no
allegation in the Rule 608(b) showing that Basmadjian revealed
part or all of his conception to any individual at OMRF. There
was no allegation in the Rule 608(b) showing that personnel at
OMRF "derived" the invention from Basmadjian, nor was the Rule
608(b) showing based on derivation.
7.
The additional evidence will not be considered
Since we have determined that Basmadjian has not shown good
cause for having not earlier presented the additional evidence,
we will not consider that additional evidence.
IV.
Decision
We have reviewed de novo the order to show cause and hold
that it was properly entered on the basis that Basmadjian did not
make out a prima facie case of diligence.
We have reviewed Basmadjian's arguments that there is good
cause for having not filed the additional evidence with the Rule
608(b) showing. We disagree and hold that Basmadjian has not

- 58 -
shown good cause within the meaning of 37 CFR § 1.617(b).
Accordingly, the additional evidence has not been, and will not
be, considered.
Basmadjian's Rule 608(b) showing does not establish a prima
facie case of diligence for the time period June 29 through
September 28, 1992 or the time period October 5 through November
13, 1992. Hence, Basmadjian has not made out a prima facie case
of reasonable continuous diligence from prior to Landry's filing
date until Basmadjian constructively reduced to practice.
Accordingly, summary judgment under 37 CFR § 1.617 should be
entered against Basmadjian.
V.
Judgment
For the reasons given herein, it is
ORDERED that Basmadjian additional evidence will not be
considered.
ORDERED that summary judgment is entered against the
Junior Party Garo Basmadjian and Stanley L. Mills.
FURTHER ORDERED that judgment as to Count 1, the sole
count in the interference, is awarded against the Junior Party
Garo Basmadjian and Stanley L. Mills.
FURTHER ORDERED that judgment as to Count 1 is entered
in favor of the Senior Party Donald W. Landry and Kang Zhao.

- 59 -
FURTHER ORDERED that the Junior Party Garo Basmadjian
and Stanley L. Mills is not entitled to a patent containing
claims 103-112 and 114-115 (corresponding to Count 1) of
Application 07/976,584, filed November 13, 1992.
FURTHER ORDERED that the Junior Party Garo Basmadjian
and Stanley L. Mills is not entitled to a patent containing
claims 6-38 (corresponding to Count 1) of Application 08/451,698,
filed May 26, 1995.
FURTHER ORDERED that, on this record, the Senior Party
Donald W. Landry and Kang Zhao are entitled to a patent
containing claims 1-9 (corresponding to Count 1) of U.S. Patent
Nº 5,463,028, granted October 31, 1995, based on application
07/862,801, filed April 3, 1992.
______________________________
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )

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cc (via Federal Express):
Attorneys for Basmadjian
(real party in interest,
The Board of Regents of the
University of California):
Charles A. Codding, Esq.
Christopher W. Corbett, Esq.
DUNLAP & CODDING, P.C.
9400 N. Broadway, Suite 420
Oklahoma City, Oklahoma 73114
Attorneys for Landry
(real party in interest,
The Trustees of Columbia University;
exclusive licensee Pharmalytics, Inc.)
John P. White, Esq.
Albert Wai-Kit Chan, Esq.
c/o COOPER & DUNHAM LLP
1185 Avenue of the Americas
New York, NY 10036