Sullivan v. Bingel

NOT PRECEDENTIAL
Paper No. 73
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
JEFFREY M. SULLIVAN,
and DANIEL ANTHONY GATELY
Junior Party,
(U.S. Patents 6,015,916 and 6,455,719),
v.
CARSTEN BINGEL,
BERTHOLD SCHIEMENZ, and MARKUS GORES
Senior Party,
(Application 09/508,057).
_______________
Patent Interference No. 104,818 (MPT)
_______________
Before: SCHAFER, TORCZON and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
FINAL JUDGMENT AND RECOMMENDATION
(Pursuant to 37 CFR § 1.662(a) and § 1.659(c))
I. Judgment on Priority
Sullivan was Ordered to Show Cause “why judgement on priority should not be entered
against Sullivan.” (Order to Show Cause, Paper No. 62). In response to this Order, Sullivan
“accedes, on the facts presented, to the entry of judgment on priority only against Sullivan and in
favor of Bingel. (Paper No. 72, emphasis in original).

Interference No. 104,818
Page No. 2
Under USPTO practice:
A party may, at any time during an interference, request and agree to entry of an
adverse judgment. The filing by a party of a written disclaimer of the invention
defined by a count, concession of priority or unpatentability of the subject matter
of a count, abandonment of the invention defined by a count, or abandonment of
the contest as to a count will be treated as a request for entry of an adverse
judgment against the applicant or patentee as to all claims which correspond to
the count. Abandonment of an application, other than an application for reissue
having a claim of the patent sought to be reissued involved in the interference,
will be treated as a request for entry of an adverse judgment against the applicant
as to all claims corresponding to all counts. Upon the filing by a party of a request
for entry of an adverse judgment, the Board may enter judgment against the party.
37 C.F.R. §1.662(a), emphasis added. As set forth in the USPTO interference practice rules,
Sullivan’s concession on priority is treated as a request for entry of an adverse judgment against
all Sullivan claims that correspond to the count.
Count 2 is the sole count in interference. (Notice Redeclaring Interference, Paper
No. 44). Sullivan is involved in the interference based upon two issued U.S. Patents Nos.
6,015,916 and 6,455,719. All the claims of Sullivan’s involved patents correspond to Count 2,
i.e., claims 1-18 of U.S. Patent No. 6,015,916 and claim 1 of U.S. Patent No. 6,455,719. As all
of Sullivan’s claims correspond to Count 2, judgment is entered against all of Sullivan’s claims.
During an interference proceeding, the “Board of Patent Appeals and Interferences shall
determine questions of priority of inventions and may determine questions of patentability.”
35 U.S.C. §135(a), emphasis added. Thus, the question of priority of invention lies at the very
heart of an interference. Since Sullivan has conceded priority, there is no longer a question of
priority as between Sullivan and Bingel, leaving only certain potential patentability questions.

Interference No. 104,818
Page No. 3
1As the February 17, 2003 date set for opposing these motions has not yet come to pass,
no Bingel opposition to these motions has been received by the Board. Furthermore, no cross-
examination testimony or replies have been filed with the Board.
237 C.F.R. §1.659(c) provides that:
The Board may make any other recommendation to the examiner or Commissioner as
may be appropriate.
In light of Sullivan’s concession on priority, this interference is terminated at a very early
stage in the proceedings.1
II. Sullivan’s Preliminary Motions and Recommendation for the Examiner
Sullivan has filed two preliminary motions under 37 C.F.R. §1.633(a) alleging that
Bingel’s involved claims, i.e., 2 and 4-12, are unpatentable. (Sullivan Revised Preliminary
Motion 1, Paper No. 66 and Sullivan Preliminary Motion 2, Paper No. 53). The issues raised by
Sullivan’s two preliminary motions relate to patentability and the technical issues raised therein
are particularly well suited for an examiner’s review and consideration.
Based upon the facts presented in this interference, and as Bingel’s involved claims are
present in a pending U.S. application, a determination as to the patentability of Bingel’s claims is
best resolved by the examiner. For example, the panel notes that the technology in question
relates to metallocene catalyst synthesis, a highly technical field that has not been fully explained
on this limited record. Thus, the Board exercises its discretion2 and recommends that the
examiner of Bingel’s involved U.S. Application No. 09/508,057 consider the issues raised in
Sullivan’s preliminary motions.

Interference No. 104,818
Page No. 4
In the last decade, Congress has introduced patent term adjustments for time spent in an
interference. The current version, codified at 35 U.S.C. §154(b)(1)(C), provides for a day-for-
day extension of the applicant's term. In contrast, during ex parte prosecution there is a three-
year period for the examiner to complete prosecution and there are automatic limits on the time
that the applicant has to act. 35 U.S.C. §154(b)(1)(B) and(b)(2)(C). Consequently, in an
interference in which the patentability issues have not been fully developed, once the core issue
of priority has been resolved, there is little justification in continuing the interference to develop
fully issues that can be administered more efficiently in an examination. 37 CFR §1.601(a)
provides that interferences are to be resolved in a “just, speedy an inexpensive” manner. In
having the examiner review the patentability issues presented in Sullivan’s motions, the Board is
mindful of the need to avoid unnecessarily continuing a §135(a) interference proceeding where
the question of priority no longer exists.
Additionally, the panel notes that if Sullivan desires, Sullivan may file a protest under
37 C.F.R. §1.291 against Bingel’s application.
III. Bingel’s Preliminary Motions
Bingel has two pending preliminary motions. Bingel Preliminary Motion 1 (Paper
No. 56) requests judgment against Sullivan claims 10 through 16 of Sullivan’s U.S. Patent No.
6,015,916. Bingel Preliminary Motion 2 (Paper No. 57) requests judgment against claim 1 of
Sullivan’s U.S. Patent No. 6,455,719.

Interference No. 104,818
Page No. 5
Sullivan has conceded priority as to Count 2. Judgment is entered against all the claims
of Sullivan’s U.S. Patent No. 6,015,916 and U.S. Patent No. 6,455,719. Accordingly, Bingel
Preliminary Motions 1 and 2 are dismissed as moot as all of Sullivan’s claims of have been
determined to be unpatentable to Sullivan.
IV. Sullivan’s Request for Reconsideration
Sullivan has requested reconsideration in-part of the Notice Redeclaring Interference
(Paper No. 44). Sullivan’s request (Paper No. 50) asks that the Notice be modified by vacating
that part of the Notice that granted Bingel Miscellaneous Motion 2 to amend Bingel claim 8. As
adverse judgment is entered against all of Sullivan’s pending claims, Sullivan’s request for
reconsideration of Paper No. 44 (Notice Redeclaring Interference) is dismissed as moot.
Upon consideration of the record, it is:
ORDERED that judgment on priority as to Count 2 (Notice Redeclaring Interference,
Paper No. 44), the sole count in the interference, is awarded against Junior Party Sullivan.
FURTHER ORDERED that Junior Party Sullivan is not entitled to a patent containing
claims 1-18 of U.S. Patent No. 6,015,916 and claim 1 of U.S. Patent No. 6,455,719, which
correspond to Count 2 (Paper No. 44, p. 7).
FURTHER ORDERED that a copy of this final decision shall be placed and given a
paper number in the file of Sullivan U.S. Patent No. 6,015,916, Sullivan U.S. Patent No.
6,455,719 and Bingel, U.S. Application No. 09/508,057.

Interference No. 104,818
Page No. 6
FURTHER ORDERED that Sullivan’s Request for Reconsideration of Paper No. 44 is
dismissed as moot.
FURTHER ORDERED that Bingel Preliminary Motions 1 and 2 are dismissed as moot.
FURTHER ORDERED that if there is a settlement agreement, attention is directed to
35 U.S.C. § 135(c) and 37 CFR § 1.661.
RECOMMENDED that the examiner of Bingel’s involved application review Sullivan
Revised Preliminary Motion 1 (Paper No. 66) and Sullivan Preliminary Motion 2 (Paper No. 53)
and consider taking any action deemed necessary to ensure the patentability of Bingel’s claims.
RICHARD E. SCHAFER )
Administrative Patent Judge )
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
MICHAEL P. TIERNEY )
Administrative Patent Judge )
Counsel for Sullivan, Edward S. Irons. Sullivan Designated Backup Counsel, Jerry W.
Berkstresser.
Counsel for Bingel (real party in interest Basell Polypropylen GmbH), Herbert B. Keil of KEIL
& WEINKAUF.