Griggs v. Rose

INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
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 decision was entered on
24 February 1999.
Filed by: Trial Section Merits Panel Paper No. 12
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
_______________
EUGENE S. GRIGGS, JR., AND JOANNE HAYES
Junior Party,
(Application 08/585,485)
v.
HOWARD L ROSE
Senior Party.
(Patent No. 5,492,077)
_______________
Patent Interference No. 103,729
_______________
Before McKELVEY, Senior Administrative Patent Judge, and SCHAFER,
LEE, and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON PRELIMINARY MOTION
This interference is before a merits panel for a decision on
preliminary motions. Party Rose has filed a single preliminary
motion under 37 C.F.R. § 1.633(a) for judgment against claims 19,

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20, 27 and 28 of Griggs 	 involved application on the ground that
they are unpatentable to party Griggs.
FINDINGS OF FACT
1. This interference was declared on October 3, 1997, with
a single count.
2. At the time of declaration of this interference, patent
claims 1-17 of party Rose were designated as corresponding to the
count.
3. At the time of declaration of this interference,
application claims 1-6, 8, 9, 11, and 13-31 of junior party
Griggs were designated as corresponding to the count.
4. Party Griggs 	 application claims 19, 20, 27, and 28 are
identical to party Rose 	 patent claims 7, 8, 15 and 16.
5. Griggs 	 application claims 19, 20, 27 and 28 are copied
from claims 7, 8, 15 and 16 of Rose 	 involved patent, subsequent
to the filing of Griggs 	 involved application.
6. On the Form 850 accompanying the notice declaring this
interference, the examiner has indicated that claims 19, 20, and
27 and 28 of junior party Griggs  s involved application are
unpatentable.

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7. In the examiner  s initial interference memorandum or
statement under 37 C.F.R. § 1.609(b), on page 11, the examiner
stated:
However, claims 19-20 and 27-28 [of junior party
Griggs 	 involved application] are unpatentable pending
claims in the application 08/585,485, as there is no
support for these claims in the specification, and
therefore these claims would be rejected under 35
U.S.C. § 112, first paragraph.
8. Neither party has filed a preliminary motion under 37
C.F.R. § 1.633(c) to redefine this interference by adding or
substituting a count, or by designating different claims as
corresponding or not corresponding to the count.
9. Junior party Griggs has filed no preliminary motion.
10. Senior party Rose has filed a single preliminary motion
under 37 C.F.R. § 1.633(a) alleging that application claims 19,
20, 27 and 28 of the junior party Griggs 	 involved application
are unpatentable to junior party Griggs under 35 U.S.C. § 112.
11. Both parties have filed a preliminary statement.
DISCUSSION
Party Rose  s motion for judgment is	 dismissed.
It is axiomatic that an interference cannot be conducted for
subject matter that is unpatentable. On this record, through the
supervisory patent examiner whose signature appears on the
examiner  s initial interference memorandum and on the PTO Form

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850, the Commissioner has already determined that party Griggs 
application claims 19, 20, and 27 and 28 are unpatentable under
35 U.S.C. § 112, first paragraph, for lack of written description
in the specification of Griggs 	 involved application as filed.
Until that determination of the examiner is overcome in ex
parte prosecution or otherwise reversed on appeal, those claims
do not belong in this interference except to be carried forward
to termination for further action in ex parte examination. In
that sense, they are "dead claims" during the interference even
if they have been designated as corresponding to the count. As
such, they cannot form the battleground for or be the targets of
patentability attacks which do not involve the other claims.
If an opposing party wishes to add to or otherwise further
support the examiner  s determination of unpatentability, a
protest may be filed under 37 C.F.R. § 1.291. For that purpose,
a motion for judgment under 37 C.F.R. § 1.633(a) is
inappropriate. If party Griggs disagrees with the examiner  s
determination, the matter may be taken up with the examiner at
the conclusion of this interference, if party Griggs prevails on
priority. If party Griggs does not prevail on priority, then
those claims are in any event unpatentable to party Griggs on
priority grounds.

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Party Griggs 	 claims 19, 20, 27 and 28 have been determined
by the examiner as unpatentable under 35 U.S.C. § 112, first
paragraph, prior to the declaration of this interference. For
the foregoing reasons, party Rose  s motion for judgment on the
ground that claims 19, 20, 27 and 28 of Griggs are unpatentable
under 35 U.S.C. § 112 is not an appropriate motion in this
interference and thus will not be considered.
A blank scheduling order for the testimony and briefing
schedule is enclosed. The parties shall review the same and
confer with each other to stipulate to an agreed schedule
according to which the junior party  s main brief will be filed	 no
later than August 31, 1999.
It is
ORDERED that preliminary statements are now opened and the
parties shall serve their preliminary statements to each other
within seven (7) days of the date of this communication;
ORDERED that within twenty (20) days of this communication,
the parties shall contact the administrative patent judge in a
joint telephone conference to present the stipulated testimony
and briefing schedule; and

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FURTHER ORDERED that a copy of this opinion shall be
published without identifying the parties or their counsel or
their involved application and patent numbers.
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)
Counsel to junior party Griggs
Robert H. Rines
Rines and Rines
Counsel to senior party Rose
Alvin S. Blum