Sellstedt v. Ishimaru

543 F.2d 1328, 191 U.S.P.Q. (BNA) 671, 1976 CCPA LEXIS 123

Opinions

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Patent Interferences (board) which, by summary judgment under 37 CFR 1.228 (Rule 228) awarded priority to the senior party Ishimaru against the junior party Sellstedt as to all counts in interference. We affirm.

Background

On February 20,1975, appellant Sellstedt, pursuant to the provisions of 37 CFR 1.205, copied into his patent application fifteen claims which correspond in substance to claims 1-15 of a patent to Ishimaru. Since his effective filing date was more than three months subsequent to the effective filing date of the patentee, affidavits required by 37 CFR 1.204(c) (Rule 204(c)) were submitted. On July 25,1975, an interference was declared between appellant’s application and the Ishimaru patent. On that same day, an Examiner of Interferences, considering the affidavits insufficient to make out a prima facie case of priority, issued an order under Rule 228

Footnotes

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* pointing out the insufficiency and notifying appellant that summary judgment would be entered against him unless he could show cause why such action should not be taken. Appellant admittedly received the order to show cause and never filed a response to that order, wherefore the board rendered the following decision and opinion:

Whereas, Sellstedt, the junior party, has failed to make any response to the order to show cause why summary judgment should not be entered against him in view of the insufficiency of his showing under Rule 204(c) to overcome the effective filing date of Ishimaru, the senior party, and whereas the time allowed for such response has expired, as provided in Rule 228, priority of invention of the subject matter in issue is hereby awarded to Toshiyasu Ishimaru, the senior party.

The above award of priority is deemed to terminate this proceeding.

Appellant would now have us consider the board’s decision as one on the sufficiency of the affidavits and would have us review that decision as so characterized.

OPINION

The sufficiency of the affidavits is not before us; the board never passed on that matter. It is manifest from the opinion of the board that its decision was based solely on the failure of appellant to respond to an order to show cause issued by the Examiner of Interferences under Rule 228. That rule clearly states that, in the absence of a showing of good and sufficient cause in response to such an order, summary judgment “will” or “shall” be awarded against the party to whom the order was addressed. Appellant admits that he did not file any response to the order to show cause, and does not question the lawfulness or the reasonableness of the rule. Rule 228, which has the force and effect of law, 35 U.S.C. § 6, Land v. Dreyer, 155 F.2d 383, 33 CCPA 1108 (1946), and is mandatory, controls.

To pursue the course urged by appellant and proposed in the dissenting opinion would deprive the order to show cause of its traditional meaning, permitting the recipient of the order to ignore it and still obtain a review in this court of a matter not passed on by the Board of Patent Interferences. Rule 228 clearly contemplates that the recipient of the order to show cause will obtain consideration by the board of his arguments that his affidavits are sufficient only if he files a response to the order. All Rule 261 does is to list the various ways in which an interference “will be terminated,” Rule 228 proceedings being one such way.

Taxation of Costs

Appellant moves pursuant to our Rule 5.6(c), that appellee be taxed the cost of printing pages 12-34 of the transcript. Pages 12-15 reproduce the appellant’s original claims which, of course, have nothing to do with the issues appellant raises. Appellant states that pages 16-34 relate “only to appellant’s copying of claims from appellee’s patent and reading of the copied claims on appellant’s disclosure to establish that there is support for such claims under 37 C.F.R. 1.205.” We agree with appellant’s statement as it applies to pages 16-31 and also agree that this material has nothing to do with the issues which appellant attempted to raise here. As to pages 32-34, they relate to appellant’s affidavits filed under 37 CFR 1.204(c), the sufficiency of which appellant would have us review. Indeed, page 34 is the first page of the Sellstedt affidavit. Appellee, therefore, is taxed the cost of printing pages 12-31 of the transcript, appellant to assume the cost of printing the other pages in question.

The decision of the Board of Patent Interferences is affirmed.

AFFIRMED.

Rule 228, in pertinent part, reads:

§ 1.228 Summary judgment.

When an interference is declared on the basis of a showing under § 1.204(c), such showing will be examined by an Examiner of Interferences. If the Examiner considers that the facts set out in the showing provide sufficient basis for the interference to proceed, the interference will proceed in the normal manner as provided by the regulations in this part; otherwise an order shall be entered concurrently with the notice of interference pointing out wherein the showing is insufficient and notifying the applicant making such showing that summary judgment will be rendered against him because of such insufficiency at the expiration of a period specified in the notice, not less than 30 days, unless cause be shown why such action should not be taken. In the absence of a showing of good and sufficient cause, judgment shall be so rendered. [Emphasis ours.]

The balance of the rule deals with situations in which a response to the order to show cause has been filed.