Ondeyka v. Shelley

1
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 14
Filed by: Trial Section Motions Panel
Box Interference Filed
Washington, D.C. 20231 24 July 2001
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JOHN ONDEYKA, OTTO HENSENS and JERROLD LIESCH
Junior Party,
(Patent 5,091,389),
v.
PETER R. SHELLEY and RHONA BANKS
Senior Party,
(Application 08/311,290).
_______________
Patent Interference No. 104,709
_______________
Before: SCHAFER, TORCZON and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
ORDER TERMINATING INTERFERENCE
A. Background
This interference was declared on June 1, 2001 between a Shelley application and an
Ondeyka patent. In their list of intended preliminary motions, Ondeyka has drawn the Board  s
attention to the following highly material information:

2
Ondeyka notes that their patent (U.S. Patent No. 5,091,389) expired on February
25, 1996, due to non-payment of maintenance fees.
(Ondeyka List of Intended Preliminary Motions, Paper No. 13, p. 3 and 35 U.S.C. § 41(b)). At
the time the interference was declared, the Board was unaware that Ondeyka  s patent had
expired.
B. Discussion
The patent interference statute, 35 U.S.C. § 135(a) does not authorize an interference
between an expired patent and a pending application. Specifically, 35 U.S.C. § 135(a) provides
in part:
Whenever an application is made for a patent which, in the opinion of the
Director, would interfere with any pending application, or with any unexpired
patent, an interference may be declared and the Director shall give notice of such
declaration to the applicants, or applicants and patentee, as the case may be.
(Emphasis added). As the Ondeyka patent had expired as of the date the interference was
declared, the Board lacks subject matter jurisdiction over the interference. Petrie v. Welsh, 21
USPQ2d 2012 (BPAI 1991); Waterman v. Birbaum, 53 USPQ 2024 (BPAI (ITS) 2000).
While recognizing that its patent has expired, Ondeyka seeks to file the following
preliminary motions: (1) One or more motions under 37 CFR § 1.633(a) on the grounds that
Shelly  s claims are unpatentable; (2) a motion under 37 CFR § 1.633(g) attacking the priority
benefit accorded to Shelly  s claims; and (3) a motion under 37 CFR § 1.635 authorizing full
third-party participation by Ondeyka in the examination of Shelley  s U.S. application or any
continuing application thereof. (Paper No. 13, pages 2-3). Moreover, Ondeyka states:
In declining to pay the required maintenance fee for U.S. Patent No. 5,091,389, Ondeyka

3
affirmatively dedicated the claims of their patent to the public. Ondeyka has a continuing
interest in ensuring that this subject matter is fully accessible to all members of the
public, including Ondeyka. Due to the unique circumstances presented by this case there
exists an extraordinary situation which requires a waiver of the provisions of 37 C.F.R. §
1.291 to the extent that they would preclude full participation by Ondeyka in any protest
in the Shelley application and further to the extent that Ondeyka should be permitted to
fully participate in proceedings before the Primary Examiner and before the Board, if an
appeal is taken.
(Paper No. 13, p. 3).
Ondeyka  s request to file motions attacking Shelley  s accorded priority benefit and
patentability is denied. Specifically, the Board lacks subject matter jurisdiction to resolve
priority of invention or patentability in this interference. Moreover, as to Ondeyka  s request to
fully participate in the prosecution of Shelley  s application:
It is well-settled that an individual does not have a right to intervene in the
prosecution of a particular application to prevent issuance by the Patent and
Trademark Office of a patent sought by another. Animal Legal Defense Fund v.
Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1692 (Fed. Cir. 1991); Godtfredsen
v. Banner, 503 F. Supp. 642, 646, 207 USPQ 202, 207 (D.D.C. 1980) (individual
lacks standing to challenge a decision by PTO to issue a patent to another).
Petrie, 21 USPQ2d at 2013. Our decision, however, is without prejudice to Ondeyka  s rights
under the protest provisions of 37 CFR § 1.291.
In light of our decision today, the conference call set for 10:00 am on July 25, 2001 is
cancelled.
C. Order
Upon consideration of the record, and for the reasons given, it is:
ORDERED that the interference is TERMINATED.

4
FURTHER ORDERED that a copy of this Order Terminating Interference shall be
placed and given a paper number in the file of Ondeyka, U.S. Patent No. 5,091,389 and Shelley,
U.S. Patent Application 08/311,290.
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )

5
cc (via Facsimile):
Attorney for ONDEYKA (Real party of
Interest Merck & Co., Inc.):
J. Eric Thies
MERCK & CO., INC.
126 E. Lincoln Avenue,
Patent Department RY 60-30
Rahway, N.J. 07065
Tel: 732-594-4000
Attorney for SHELLEY (Real party of
Interest SmithKline Beecham Corporation):
Robert G. McMorrow
CONNOLLY BOVE LODGE & HUTZ LLP
1220 Market Street
P. O. Box 2207
Wilmington, DE 19899
Tel: 302-658-9141