Gray v. Heeres

THIS OPINION WAS WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today is binding precedent of the Interference Trial
Section of the Board of Patent Appeals and
Interferences. The opinion is otherwise not binding
precedent. The decision was entered on 5 April 1999
Paper 29
Filed by: Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
NANCY M. GRAY and RAYMOND L. WOOSLEY
Junior Party,
(Patent 5,474,997),
v.
JAN HEERES, JEAN L. MESENS and JOZEF PEETERS
Senior Party
(Application 08/676,531).
_______________
Patent Interference No. 104,079
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, LEE and TORCZON, Administrative Patent Judges.
PER CURIAM.
JUDGMENT PURSUANT TO 37 CFR § 1.662

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Upon consideration of the GRAY ET AL. ABANDONMENT OF CONTEST
UNDER 37 C.F.R. § 1.662(a) (Paper 28), it is
ORDERED that judgment on priority as to Count 1, the
sole count in the interference, is awarded against junior party
NANCY M. GRAY and RAYMOND L. WOOSLEY.
FURTHER ORDERED that judgment on priority as to
Count 1 is awarded in favor of senior party JAN HEERES,
JEAN L. MESENS and JOZEF PEETERS.
FURTHER ORDERED that, on the record before the Board of
Patent Appeals and Interferences, senior party JAN HEERES,
JEAN L. MESENS and JOZEF PEETERS is entitled to a patent
containing claims 13-25 (corresponding to Count 1) of application
08/676,531, filed July 9, 1996.
FURTHER ORDERED that junior party NANCY M. GRAY and
RAYMOND L. WOOSLEY is not entitled to a patent containing claims
1-15 (corresponding to Count 1) of U.S. Patent 5,474,997, granted
December 12, 1995, based on 08/341,266, filed November 17, 1994.
FURTHER ORDERED that notwithstanding the following
sentence in the GRAY ET AL. ABANDONMENT OF CONTEST UNDER 37
C.F.R. § 1.662(a) (Paper 28):
However, by abandoning the contest [due to a lack of
commercial interest on the part of Sepracor, the real party
in interest] as to Count 1, the party Gray et al. does not
concede the issue of priority of invention to the party
Heeres et al.

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(1) the filing of the GRAY ET AL. ABANDONMENT OF
CONTEST UNDER 37 C.F.R. § 1.662(a) (Paper 28) shall be treated as
a request for entry of an adverse judgment (see 37 CFR
§ 1.662(a)) and
(2) the judgment entered today is a judgment on the
merits which as between the parties to the interference
establishes that JAN HEERES, JEAN L. MESENS and JOZEF PEETERS
"made" (35 U.S.C. § 102(g)) the invention defined by Count 1
prior to NANCY M. GRAY and RAYMOND L. WOOSLEY.
FURTHER ORDERED that the preliminary statement filed by
Heeres is returned unopened.
FURTHER ORDERED that if there is a settlement
agreement, attention is directed to 35 U.S.C. § 135(c) and 37 CFR
§ 1.661.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
) BOARD OF PATENT
______________________________) APPEALS AND
JAMESON LEE ) INTERFERENCES
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )