LeVeen v. Edwards

The panel was expanded after oral argument before a three-judge	1
panel. Cf. Kingsdown Med. Consultants, Ltd. v. Hollister, Inc.	, 863 F.2d 867,
876 n.16, 9 USPQ2d 1384, 1392 n.16 (Fed. Cir. 1988) (in banc consideration
of a single section of opinion);see also In re Bose Corp., 772 F.2d 866,
227 USPQ 1 (Fed. Cir. 1985) (change in panel composition after oral argument
not error).
The opinion in support of the decision being
entered today is binding precedent of the Trial Section
Filed by: Motions Panel Paper No. 240
Interference Trial Section
Box Interference Filed
Washington, D.C. 20231 8 December 2000
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
ROBERT F. LEVEEN,
Junior Party,
(Application 08/559,072),
v.
STUART D. EDWARDS, RONALD G. LAX
and HUGH SHARKEY,
Senior Party,
(Patent No. 5,536,267).
________________
Patent Interference No. 104,290
________________
Before: McKELVEY, Senior Administrative Patent Judge	, and
SCHAFER, LEE, TORCZON, GARDNER-LANE and MEDLEY,Administrative
Patent Judges.1
PER CURIAM.
MEMORANDUM OPINION and ORDER
(Decision on Edwards preliminary motion 1)

- 2 -
A. Introduction
Edwards preliminary motion 1 seeks entry of judgment against
LeVeen claims 43 and 44. According to Edwards, the LeVeen claims
are anticipated under 35 U.S.C. § 102(e) by Edwards '597 (U.S.
Patent 5,458,597 (Ex 5001)) or are unpatentable under 35 U.S.C.
§ 103 over Edwards '597 in view of Ende (U.S. Patent 1,814,791
(Ex 5002)) and/or McFadden (U.S. Patent 1,943,543 (Ex 5003)).
For reasons hereinafter given, the preliminary motion is
dismissed because it (1) has not been presented in a procedurally
proper fashion and (2) fails to state a claim upon which relief
may be granted under 37 CFR § 1.633(a).
B. Discussion
1.
Edwards was given actual notice of procedure to be followed
in filing preliminary motions. Despite actual knowledge, Edwards
has not followed that procedure. Moreover, as will become
apparent, the facts set out in the preliminary motion fail, as a
matter of law, to support a finding of anticipation under
§ 102(e) or a conclusion of obviousness under § 103. Hence, the
preliminary motion fails to state a claim for which relief may be
granted under 37 CFR § 1.633(a). Edwards has not "fairly place

Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989)	2
(if patentability is fairly placed at issue in an interference, it will
be determined).
- 3 -
at issue" in this interference an issue of anticipation or	2
obviousness. Hence, we elect to exercise our discretion by
dismissing Edwards preliminary motion 1.
The preliminary motion filed by Edwards is basically sloppy.
We regret to say that Edwards is not alone. Sloppy motions are
being filed in far too many interferences. A sloppy preliminary
motion has several adverse consequences on the administration of
justice in interference cases. In no particular order of
importance, the following adverse consequences come to mind:
(1) unnecessary expense to the party;
(2) prejudice to the opponent who must determine on
its own the party's position so that an opposition
may be presented;
(3) unnecessary expense to the opponent; and
(4) inefficient use of board resources.
In this particular interference, we do not know whether to
be annoyed or disappointed or both with respect to the
superficial effort which seems to have been made by counsel for
Edwards in connection with Edwards preliminary motion 1. Without
a doubt, however, we are frustrated with that effort. The board
does not have unlimited resources to handle sloppy motions.

- 4 -
Moreover, a motion--including a preliminary motion--is not a
pleading. Nor is it the function of the board to assume the role
of counsel for a party by making an attempt to figure out whether
the evidence in support of a motion makes out a case based on
some theory not set out in the motion. The board will not engage
in "role-shifting" by becoming counsel for a party and turning
the interference into a contested case between (1) the party and
the board, on the one hand, versus (2) the opponent, on the other
hand.
2.
In a NOTICE DECLARING INTERFERENCE (Paper 1), Edwards was
given actual notice of procedures which are to be followed in
this interference.
a.
Paragraph 13 of the NOTICE DECLARING INTERFERENCE states in
rather plain terms (Paper 1, page 10):
Arguments presented in one paper shall not be
incorporated by reference to another paper.
A footnote associated with ¶ 13 explicitly states (Paper 1,
page 10 n.7):
The purpose of this requirement is to minimize the
chance that an argument will be overlooked and to
maximize the efficiency of the decision-making process.

- 5 -
b.
Paragraph 26 of the NOTICE DECLARING INTERFERENCE (Paper 1)
states in part (Page 22-26):
[page 22]
Motions
a. In presenting a motion, a party shall set out in
the following order:
(1) The precise relief requested ***.
[page 23]
(2) The evidence (i.e., a list of all exhibits by
number) the moving party relies in support of
the motion.
(3) The facts in separately numbered paragraphs
with a citation to the evidence.
(4) An argument setting out the reasons why
relief should be granted.
Oppositions
b. In presenting an opposition, a party shall set out
in the following order:
(1) The evidence (i.e., a list of all exhibits by
number) the opposing party relies in support
of the opposition.
(2) Whether each fact alleged by the moving party
is admitted, denied or that the opposing
party is unable to admit or deny the fact
alleged.
(3) Any additional facts upon which the opposing
party intends to rely with a citation to the
evidence.

- 6 -
(4) An argument stating the reason why relief is
opposed in the following manner: "On page x,
[page 24]
lines y-z of the motion, it is argued that
________. The response is ________."
* * * * *
[page 25]
Preliminary motion--anticipation
d. When anticipation (35 U.S.C. § 102) over a single
prior art reference is the basis for a preliminary
motion for judgment (37 CFR § 1.633(a)), each claim
alleged to be anticipated should be reproduced as an
appendix to the preliminary motion. Following each
element recited in each claim, and within braces { }
and in bold, there shall be inserted a specific
reference to the column and line and/or drawing figure
and numeral and/or other material where the reference
describes each element of the claim. A similar
procedure should be used for each claim of an opponent
which a party maintains is anticipated.
Preliminary motion--obviousness
e. When obviousness (i.e., 35 U.S.C. § 103) over the
prior art is the basis for a preliminary motion for
judgment (37 CFR § 1.633(a)), a similar procedure shall
be used [at least one element of the claim will not be
described in a prior art reference]. Any difference
shall be explicitly identified. Finally, an
explanation should be made as to why the subject matter
of the claim, as a whole, would have been obvious to a
person having ordinary skill in the art notwithstanding

- 7 -
any difference. A similar procedure should be used for
each claim of
[page 26]
an opponent which a party maintains is unpatentable
based on obviousness.
A footnote in part (a)(3) of ¶ 26 of the NOTICE DECLARING
INTERFERENCE states (Paper 1, page 23 n.23):
A motion may be denied if the facts alleged are
insufficient to state claim for which relief may be
granted. Facts belatedly set out only in the argument
portion of a motion may be overlooked and may result in
a motion being denied.
c.
Paragraph 28 of the NOTICE DECLARING INTERFERENCE (Paper 1)
states in part (page 27):
A motion is limited to twenty-five (25) pages, not
including any certificate of service.

- 8 -
3.
Edwards preliminary motion, sans heading, table of contents,
footnotes, signature block and certificate of service follows
with material in [brackets] added and material deleted noted by
***".
I. Statement of the Precise Relief Requested
Edwards requests judgment that both of LeVeen's
claims [43 and 44] designated as corresponding to the
count are anticipated by U.S. patent *** 5,498,597 (***
"the Edwards '597 patent") [Ex 5001] under 35 U.S.C.
102(e) and/or unpatentable [under 35 U.S.C. 103] over
the Edwards '597 patent in view of *** U.S. Patent ***
1,814,791 (*** "the Ende patent") [Ex 5002] and/or U.S.
patent 1,943,547 (*** the McFadden patent") [Ex 5003].
II. Evidence Relied Upon in Support of Motion
Exhibits 5001, 5002, 5003, 5004, 5010 and 5015.
III. Statement of the Material Facts in Support of the
Motion
(1) The Edwards '597 patent matured from
application *** 08/148,439 (*** "the '439
application").
(2) The '439 application was filed on
November 08, 1993.
(3) The Edwards '597 patent issued on October 17,
1995.
(4) The Edwards patent [involved] in [the]
interference (*** "the Edwards '267 patent") [Ex 5004]

- 9 -
matured from application *** 008/290,031 (*** "the '031
application").
(5) The '031 application was filed on August 12,
1994.
(6) LeVeen's application [involved] in [the]
interference is application *** 08/559,072 (*** "the
'072 application").
(7) The '072 application was filed on
November 16, 1995.
(8) The '072 application claims the benefit of
the filing date of application *** 08/410,344 (*** "the
'344 application").
(9) The '344 application was filed on March 24,
1995.
IV. Statement of the Reasons Why the Relief
Requested Should be Granted
A. Relevant Field and Level of Skill in the Art
The subject matter defined by claims 43 and 44 of
the LeVeen application *** is at the interface of the
field of medical surgery generally and electrosurgery
in particular and the field of designing devices for
use in medical surgery generally and electrosurgery in
particular. Exhibit 5010 ¶ 4 and Exhibit 5015 ¶ 4.
One of ordinary skill in the art in the field of
medical surgery generally and electrosurgery in
particular in the 1993-95 time frame would have been a
medical doctor who was knowledgeable in surgery
generally and electrosurgery in particular. Exhibit
5010 ¶ 5 and Exhibit 5015 ¶ 5.
One of ordinary skill in the field of designing
devices for use in medical surgery generally and

- 10 -
electrosurgery in particular in the 1993-95 time frame
would have been either a medical doctor, usually with
an undergraduate degree in mechanical or electrical
engineering or biological sciences, or an engineer,
usually with an undergrade degree in mechanical or
electrical engineering, in either case with five to ten
years experience in designing devices for use in
medical surgery. Exhibit 5010 ¶ 6 and Exhibit 5015
¶ 6.
B. Comparison of the Claims to the Prior Art
That LeVeen's claims 43 and 44 are either
anticipated by the Edwards '597 patent or unpatentable
[under 35 U.S.C. 103] over the Edwards '597 patent in
view of the Ende patent and/or the McFadden patent is
demonstrated in Section IV of the first declarations of
Dr. Allan Siperstein, Exhibit 5010, and Mr. Neil
Sheehan, Exhibit 5015.
V. 37 CFR 1.637(a) Explanation
The Edwards '597 patent is not applicable to
Edwards because (a) it names the same inventors as the
Edwards '267 patent (and hence is not available as
prior art under 35 U.S.C. 102(a) and 35 U.S.C. 102(e))
and (b) it did not issue until after a year before the
filing date of the '031 application (and hence is not
available as prior art under 35 U.S.C. 102(b)).
4.
Edwards presented two declarations in support of Edwards
preliminary motion 1, a Siperstein declaration (Ex 5010) and a

Ex 5024 is not among the exhibits listed in Edwards preliminary	3
motion 1 as being relied upon.
The name of counsel is not identified and we note that numerous	4
attorneys are listed at the end of Edwards preliminary motion 1.
There is no reference made to a document containing count 1 or	5
proposed count 2 or to a document containing the claims which are referred to
in count 1 and proposed count 2.
- 11 -
Sheehan declaration (Ex 5015). Insofar as we can tell, in all
material respects the declarations appear to be essentially
identical. The Siperstein declaration sans heading, table of
contents and signature block follows with material in [brackets]
and footnotes added for clarification and material deleted noted
by "***".
I. Qualifications
(1) A copy of my C.V. is Exhibit 5024.	3
II. Preparation of this declaration
(2) In connection with the preparation of this
declaration, I have read each document referred to
herein.
(3) I have discussed this declaration with
counsel for the party Edward[s] ***. While I am by no	4
means an expert in patent law, I believe that I have an
adequate general understanding of this proceeding and
the purpose for which my declaration is being used.
III. Relevant Field and Level of Skill in the Art
(4) The subject matter defined by count 1 and the
party Edwards' *** proposed count 2 is at the	5
interface of the field of medical surgery generally and
electrosurgery in particular and the field of designing

- 12 -
devices for use in medical surgery generally and
electrosurgery in particular.
(5) One of ordinary skill in the art in the field
of medical surgery generally and electrosurgery in
particular in the 1993-95 time frame would have been a
medical doctor who was knowledgeable in surgery
generally and electrosurgery in particular.
(6) One of ordinary skill in the field of
designing devices for use in medical surgery generally
and electrosurgery in particular in the 1993-95 time
frame would have been either a medical doctor, usually
with an undergraduate degree in mechanical or
electrical engineering or biological sciences, or an
engineer, usually with an undergraduate degree in
mechanical or electrical engineering, in either case
with five to ten years experience in designing devices
for use in medical surgery.
IV. Edwards [Preliminary] Motion *** 1
(7) That LeVeen's claims 43 and 44 are either
anticipated [under 35 U.S.C. § 102(e)] by *** Edwards
'597 [Ex 5001] *** or unpatentable [under 35 U.S.C.
§ 103] over *** Edwards '597 *** in view of *** Ende
[Ex 5002] *** and/or *** McFadden [Ex 5003] *** can be
demonstrated as follows:
LeVeen's Claims 43 and 44 Comments Reading LeVeen's
Claims on the Disclosure
of the [Edwards] '597
patent
43. A tissue ablation Passim
apparatus, comprising:

- 13 -
a delivery catheter Sleeve 36
with a distal end and a
proximal end;
a handle attached to Handle portion 2
the proximal end of the
delivery catheter;
an electrode Sleeve connector 34
deployment device
positioned at least Col. 5, lines 13-15
partially in the delivery
catheter and

- 14 -
including a plurality The electrode 32 curves
of retractable electrodes around a selected mass.
that are inserted into The use of a plurality
tissue, penetrate tissue, of electrodes that are
an surround a selected inserted into tissue,
mass, penetrate the tissue, and
surround a selected mass
has long been well known
in the art. See, e.g.,
Fig. 7 of Exhibit 5002,
U.S. patent *** 1,814,791,
issued in 1931 and Fig. 1
of Exhibit 5003, U.S.
patent *** 1,943,543,
issued in 1934.
each electrode having See Fig. 4
a non-deployed state when
positioned with the
delivery catheter, and
a distended deployed See Fig. 5
state when advanced from
the distal end of the
delivery catheter defining
an ablation volume between
the deployed electrodes,
each deployed See col.5 lines 16-19
electrode having at least
one radii of curvature
when advanced through the
distal end of the delivery
catheter and positioned at
a desired tissue site; and
an electrode Stylet electrode control
advancement and retraction manual tab 8
member connected to the
electrode deployment
device, for advancing the
electrodes in and out of
the delivery catheter
distal end.

A similar analysis is made for LeVeen claim 44.	6
- 15 -
* * * * *6
V. Jurat
(8) I declare under penalty of perjury under the
laws of the United States of America that the foregoing is true
and correct ***.
C. Opinion
1. Failure to follow applicable procedure
a.
Edwards, contrary to ¶ 13 of the NOTICE DECLARING
INTERFERENCE, has incorporated "arguments" from the Siperstein
and Sheehan declarations (Exs 5010 and 5015) into Edwards
preliminary motion 1. Edwards misperceives the role of motions
and evidence. Declarations are evidence. A motion is supposed
to (1) lay out all relevant facts, with reference to the evidence
which supports the facts, and (2) present an argument why the
facts justify any relief requested in the motion.
The NOTICE DECLARING INTERFERENCE explicitly precludes
incorporation by reference of arguments. There are numerous
reasons why an agency, in general or in a particular case, may
preclude incorporation by reference in papers presented to the
agency. First, an incorporated argument may be overlooked
(Paper 1, page 10 n.7). Second, incorporation of arguments is

- 16 -
not consistent with efficient decisionmaking (Paper 1, page 10
n.7). Essentially, incorporation by reference is an
inappropriate role-shifting technique which makes it a
decisionmaker's job to (1) scour the record, (2) come up with
some theory which supports a party's case and (3) articulate a
rationale in an opinion supporting the rationale without giving
an opponent a reasonable chance to address the rationale.
Third, through incorporation by reference an attorney can avoid
page limitations applicable to motions (Paper 1, page 27 ¶ 28).
Compare DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
1999) ("[a]doption by reference amounts to a self-help increase
in the length of the *** brief. *** [I]ncorporation by
reference is a pointless imposition on the court's time. A brief
must make all arguments accessible to the judges, rather than ask
them to play archaeologist with the record.").
We recognize in this particular case that both the
preliminary motion and the declarations are short. Hence, it can
be argued that there was no undue burden on the opponent or the
board to look collectively at both documents. The contrary
argument is that the procedure applicable to this interference is
otherwise and that it would have been no undue burden for Edwards
to have complied with the applicable procedure.
b.

- 17 -
Edwards also failed, in several respects, to follow the
procedure set out in ¶ 26 of the NOTICE DECLARING INTERFERENCE.
(1)
Edwards did not set out the facts in the preliminary motion
which would support the relief requested in its preliminary
motion 1. Nine facts--identified as (1) through (9)--are set out
in the statement of material facts. At best the facts establish
that Edwards '597 and Edwards '267 are prior art under 35 U.S.C.
§ 102(e). Establishing that two "references" are prior art does
not make out a case of anticipation or obviousness.
Edwards' effort totally sandbagged its opponent. An
opponent is to admit or deny each fact set out in a motion so
that the board may determine where there are disputed factual
issues. See Paper 1, page 23, part (b)(2). LeVeen easily could
have admitted the nine facts set out by Edwards and would not
have conceded the preliminary motion. There is no place in
interference practice for a party to require an opponent to
(1) search the motion and evidence, (2) set out in an opposition
the facts the opponent may believe that the party must prove to
make out its case and (3) admit or deny those facts.
(2)
Nor did Edwards use the format required by part (d) of ¶ 26
(Paper 1, page 25). Instead of inserting braces, i.e., {}, in a

- 18 -
reproduced copy of the claim, Edwards elected to do it its way by
using parallel columns. The difference between the required
procedure and the Edwards effort may seem trivial to a casual
observer. Triviality, however, is not the point.
The Trial Section established procedures in this
interference to make the overall consideration of papers
efficient. There is little doubt that it would have been just as
easy for Edwards to have complied with part (d) of ¶ 26 of the
NOTICE DECLARING INTERFERENCE. We have no idea why Edwards did
not follow the applicable procedure.
(3)
We will note another loose end in the Edwards effort. The
list of exhibits relied upon as set out in the preliminary motion
does not include two exhibits listed in the declarations. The
C.V. mentioned in each declaration [Ex 5019 and Ex 5024] is not
listed in the preliminary motion.
Edwards might say "What is the big deal?" The big deal is
that Edwards did not follow proper procedure if it sought to have
Ex 5019 and Ex 5024 considered. The board often does its work at
places other than its physical facilities at the USPTO. When a
judge decides to work on a motion at a remote location, the
motion, opposition and reply can be collected along with all the
exhibits identified in the motion, opposition and reply upon

- 19 -
which the parties rely. Failure to include all exhibits so that
they may be collected frustrates the efficient administration of
justice.
The NOTICE DECLARING INTERFERENCE accommodates many needs of
the practicing bar. It also accommodates needs of the board.
Hence, the parties are expected to follow applicable procedures.
2. Anticipation
LeVeen's claims 43 and 44 both contain the following
limitation:
A tissue ablation apparatus *** including a plurality
of retractable electrodes that are inserted into
tissue, penetrate tissue, and surround a selected mass.
The preliminary motion does not tell us where Edwards
describes the noted limitation. Yet, all concerned should know
that anticipation requires that a single prior art reference
describe each and every limitation of a claim, either explicitly
or inherently. Atlas Powder Co. v. IRECO Inc.	, 190 F.3d 1342,
1346, 51 USPQ2d 1943, 1945-46 (Fed. Cir. 1999). Since Edwards
Preliminary Motion 1 fails to explain where the prior art relied
upon describes the noted limitation, it follows that the
preliminary motion fails to state a claim for which relief may be
granted. In this particular case, the improperly incorporated by
reference declarations likewise fail to explain where the prior

- 20 -
art describes the noted limitation. It follows that the
declarations do not cure the procedural deficiencies of the
preliminary motion.
We decline to search the prior art to see if somehow it
might support Edwards' anticipation theory. Compare Clintec
Nutrition Co. v. Baxa Corp.	, 44 USPQ2d 1719, 1723 n.16 (N.D. Ill.
1997), which notes that where a party points the court to multi-
page exhibits without citing a specific portion or page, the
court will not pour over the documents to extract the relevant
information, citing United States v. Dunkel, 927 F.2d 955, 956
(7th Cir. 1991) (judges do not hunt for truffles buried in
briefs); Ernst Haas Studio, Inc. v. Palm Press, Inc.	, 164 F.3d
110, 111-12, 49 USPQ2d 1377, 1378-79 (2d Cir. 1999) ("Appellant's
Brief is at best an invitation to the court to scour the record,
research any legal theory that comes to mind, and serve generally
as an advocate for appellant. We decline the invitation.
although the issues raised are complex, appellant's main Brief is
only nine pages long and does not cite a single statute or court
decision related to copyright. Nor does it present a coherent
legal theory, even one unsupported by citation to authority that
would sustain the complaint.");Winner International Royalty
Corp. v. Wang, 202 F.3d 1340, 1351, 53 USPQ2d 1580, 1589 (Fed.
Cir. 2000) (We agree with Winner that the district court did not
abuse its discretion in allowing allegedly late-disclosed

- 21 -
witnesses to testify. Such witnesses were never even identified
by Wang in his opening brief ***. Under such circumstances, we
will not search the record on the chance of discovering which
witnesses Wang was complaining of and then determine whether the
district court abused its discretion. Thus, whichever witnesses
Wang was alluding to, admission of their testimony cannot be said
to be an abuse of discretion based on the vague arguments made by
Wang on appeal).
3. Obviousness
Edwards also has failed to fairly place the issue of
obviousness before the board.
(1)
Obviousness is an issue of law. Graham v. John Deere Co.	,
383 U.S. 1, 17 (1966); In re GPAC, Inc., 57 F.3d 1573, 1577,
35 USPQ2d 1116, 1119 (Fed. Cir. 1995). Yet, Edwards presents its
obviousness rationale--such as it is--through the testimony of
fact witnesses. These fact witnesses disavow having expertise in
the field of patent law. Moreover, we are not particularly
interested in the position of a witness on any issue of law.
The "argument" presented by the witnesses in their
declarations are not entitled to be considered because the
argument was improperly incorporated by reference into Edwards
preliminary motion 1.

- 22 -
(2)
Another fatal defect in Edwards preliminary motion 1 in
connection with Edwards' obviousness position is that Edwards
fails to set out any difference between (1) the subject of LeVeen
claims 43 and 44 and (2) the Edwards patents. It might have been
difficult to do so because Edwards did not, or perhaps was unable
to, make a decision whether to base its litigation theory on
anticipation or obviousness, preferring instead to place a
smorgasbord of theories in the preliminary motion. The Trial
Section has noticed a recent trend on the part of counsel to
"avoid" setting out the difference between claimed subject matter
and a prior art reference. Perhaps counsel believe we will not
notice any difference. However, it is essential when maintaining
obviousness to explicitly identify a difference between claimed
subject matter and a prior art reference. As the NOTICE
DECLARING INTERFERENCE makes crystal clear, "[a]ny difference
shall be explicitly identified" (Paper 1, page 25).
Edwards preliminary motion 1 is procedurally defective
because it fails to explicitly identify any difference.
(3)
Assuming arguendo that a difference has been identified,
Edwards did as poor a job as we have seen with the rest of its
obviousness case.

- 23 -
Edwards tries to shoe horn a difference into the case by the
back door via the testimony of its declarants, both of whom state
that "[t]he use of a plurality of electrodes *** has long been
well known in the art" (e.g., Ex 5015, page 2). However,
LeVeen's claims 43 and 44 call for the use of a plurality of
"retractable" electrodes and the declarants, like an ostrich,
have buried the phrase "plurality of retractable electrodes"
somewhere in the sand.
At oral argument, Judge Lee asked counsel for Edwards, where
the declarations account for LeVeen's "plurality of retractable
electrodes." Counsel had no answer. What surfaces is that the
board at oral argument may have been able to ferret out that at
least one difference exists. However, explicitly identifying a
difference at oral argument comes too late. Compare Packard
Press Inc. v. Hewlett-Packard Co.	, 227 F.3d 1352, 1360, 56 USPQ2d
1351, 1356 (Fed. Cir. 2000) (arguments raised for the first time
at oral argument come too late, citingHenry v. Department of
Justice, 157 F.3d 863, 865 (Fed. Cir. 1998)). At that point, the
opponent is unduly prejudiced by an inability to fairly respond--
particularly with evidence to the contrary.
(4)
There is another point which Edwards totally overlooks. If
one can put aside for the moment the "retractable" limitation in

- 24 -
the LeVeen claims, at best Edwards might have established that
all the elements of the LeVeen combination are known. It may be
necessary to sustain an obviousness rationale to establish that
all elements of a combination are known. But, establishing that
all elements of a combination are known does not	per se establish
obviousness. Smith Industries Medical Systems, Inc. v. Vital
Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed.
Cir. 1999) (there is no basis for concluding that an invention
would have been obvious solely because it is a combination of
elements that were known in the art at the time of the invention;
the relevant inquiry is whether there is a reason, suggestion, or
motivation in the prior art that would lead one of ordinary skill
in the art to combine the teachings of the references, and that
would also suggest a reasonable likelihood of success);In re
Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000) (identification in the prior art of each individual
part claimed is insufficient to defeat patentability of the whole
claimed invention; rather, to establish obviousness based on a
combination of elements disclosed in the prior art, there must be
some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant).
There is no discussion in Edwards preliminary motion 1 of
any evidence in the record which would establish a reason,
motivation, suggestion or teaching in the prior art as to why the

- 25 -
subject matter of LeVeen claims 43 and 44 would have been obvious
notwithstanding any difference between that subject matter and
one of the prior art Edwards patents. Hence, Edwards preliminary
motion 1 fails to make out aprima facie case of obviousness
(35 U.S.C. § 103) and therefore fails to state a claim for relief
under 37 CFR § 1.633(a) as to LeVeen claims 43 and 44.
(5)
When questioned at oral argument about the lack of analysis
in Edwards preliminary motion 1, counsel for Edwards in effect
said that "examiners do it all the time." What counsel for
Edwards apparently means is that an Examiner's Answer in an	ex
parte appeal often fails to set out the rationale which we
require of a party in an interference. When an examiner fails to
engage in sufficient fact finding in the first instance, it is
not unusual for the board to vacate the examiner's rejection and
remand for appropriate fact findings. See, e.g., Ex parte
Braeken, 54 USPQ2d 1110, 1111 (Bd. Pat. App. & Int. 1999) (non-
binding precedent) (examiner failed to describe differences
between claim and prior art; because issues were not sufficiently
developed, examiner's rejection vacated and case remanded for
development of facts).
The only difference betweenex parte practice and
interferences is that an examiner may be given an opportunity to

- 26 -
supplement the record. Inex parte practice a decision of the
board reversing an examiner's rejection is necessarily a remand.
Cf. In re Fisher, 448 F.2d 1406, 171 USPQ 292 (CCPA 1971) (every
reversal in a patent case is in effect a remand). Indeed,
prosecution in an ex parte matter may be reopened following
successful administrative or judicial review.Cf. In re Ruschig,
379 F.2d 990, 154 USPQ 118 (CCPA 1967) (USPTO may reopen
prosecution of an application after reversal by the CCPA);	Gould
v. Quigg, 822 F.2d 1074, 3 USPQ2d 1302 (Fed. Cir. 1987).
However, because there are adverse parties in an interference, a
party is normally given but one opportunity to make out its case.
Compare Burson v. Carmichael, 731 F.2d 849, 854, 221 USPQ 664,
667 (Fed. Cir. 1984) (in an interference case where losing party
wanted a remand to place additional evidence in the record, the
Federal Circuit notes that "There is no support in the law for
repeated bites at the apple."). Edwards had a chance to
procedurally place the issue of obviousness properly before the
board; it failed to do so.
Packard Press Inc. v. Hewlett-Packard Co.	, supra, also
contains a discussion which needs to be taken to heart in
presenting cases before this board. 227 F.3d at 1358, 56 USPQ2d
at 1351. Judicial review under the substantial evidence standard
can only take place when the agency explains its decisions with
precision, including the underlying fact findings and the

- 27 -
agency's rationale. Accordingly, evidence and proper argument
must be submitted to the agency to create an appropriate record
on which the agency bases its decision. Because Hewlett Packard
did not proffer such evidence in support of its argument that its
trademarks are famous, the TTAB properly declined to address
fame. Likewise, in the case of judicial review by civil action
under 35 U.S.C. § 146, a party may not be permitted to present an
issue to a reviewing district court if the issue was not fairly
presented to the board in the first instance.Compare General
Instrument Corporation, Inc. v. Scientific-Atlanta, Inc.	, 995
F.2d 209, 27 USPQ2d 1145 (Fed. Cir. 1993) (district court in
civil action under § 146 did not abuse its discretion in
declining to admit in evidence proofs directed to on-sale bar
where on-sale had not been raised before the board).
We cannot do our job if the parties do not do their job. In
this case, Edwards did not do its job and therefore we could not
do our job. The remedy in this case is not to give Edwards a
second bite at the apple and thereby burden LeVeen who already
has expended resources opposing Edwards inadequate first bite.
Rather, we will exercise discretion in this particular case to
dismiss Edwards preliminary motion 1.

- 28 -
D. Decision
Edwards preliminary motion 1 is procedurally improper and
therefore is dismissed.
Assuming arguendo that Edwards preliminary motion 1 remotely
could be considered as having been procedurally proper, it fails
to state claim for relief under 37 CFR § 1.633(a) on the ground
of obviousness as to LeVeen claims 43 and 44.
E. Order
Upon consideration of Edwards preliminary motion 1, and for
the reasons given, it is
ORDERED that Edwards preliminary motion 1 isdismissed.
FURTHER ORDERED that it has not been necessary to
consider LeVeen opposition 1 (Paper 94), from which it
necessarily follows that it has not been necessary to consider
Edwards reply 1 (Paper 152), and accordingly both the opposition
and the reply are returned without having been considered.

- 29 -
FURTHER ORDERED that this MEMORANDUM OPINION and ORDER
shall be published.
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
______________________________)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )
)
______________________________)
SALLY GARDNER-LANE )
Administrative Patent Judge )
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )

- 30 -
Via first class mail:
Counsel for LEVEEN:
Edward J. Keeling, Esq.
TOWNSEND AND TOWNSEND AND CREW, LLP
Two Embarcadero Center, 8th Floor
San Francisco, CA 94111-3834
Tel: 415-576-0200
Fax: 415-576-0300
Counsel for EDWARDS:
Charles L. Gholz, Esq.
OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, PC
Fourth Floor
1755 Jefferson Davis Highway
Arlington, VA 22202
Tel: 703-413-3000
Fax: 703-413-2220