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. 241
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 5,536,267).
________________
Patent Interference 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 2)

The facts, as necessary, are set out in the opinion portion of the	2
MEMORANDUM OPINION and ORDER. All facts are supported by a preponderance of
the admissible evidence.
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A. Introduction
Edwards preliminary motion 2 seeks entry of judgment against
LeVeen claims 43 and 44. According to Edwards, LeVeen claims are
(1) anticipated under 35 U.S.C. § 102(e) by Edwards
'267 (U.S. Patent 5,536,267 (Ex 5004)) or
(2) unpatentable under 35 U.S.C. § 103 over Edwards
'267 in view of Ende (U.S. Patent 1,814,791 (Ex 5002)) and/or
McFadden (U.S. Patent 1,943,547 (Ex 5003)).
For reasons hereinafter given, on the issue of anticipation
based on Edwards '267, the preliminary motion is	deferred and
will be decided simultaneously with a decision on the issue of
priority. The preliminary motion is otherwisedismissed.
B. Opinion2
1.
In support of its preliminary motion, Edwards has attempted
to "place in evidence" Ex 5005--a copy of the file history of
Edwards "parent" application 08/148,439 ('439 application).
Insofar as we can tell, Ex 5005 was "placed in evidence" only to
establish the filing date of the '439 application; the file
history is not otherwise discussed in Edwards preliminary motion
2 or declarations improperly incorporated by reference therein.

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Exercising our discretion on the issue of the admissibility
of evidence, we admit Ex 5005 in evidence only to the extent that
it was offered to prove that the filing date of the '439
application is November 8, 1993. Ex 5005 otherwise is not
admitted in evidence. Apart from establishing the filing date of
the '439 application, the remaining portions of the file history
have not been shown to have any probative value. In addition,
there is a danger of unfair prejudice to LeVeen should Edwards
later in the interference attempt to rely on portions of the file
history which have not explicitly been mentioned in connection
with Edwards preliminary motion 2. Fed. R. Evid. 403.
2.
Edwards fails to clearly or fairly place on the record its
position as to the "prior art" filing date of Edwards '267, the
patent upon which it relies for its anticipation.
On its face, the application which matured into Edwards '267
is a "continuation-in-part" of the '439 application (Ex 5004,
col. 1, lines 6-7). A patent may be prior art as of a filing
date of a "parent" application. 35 U.S.C. §§ 102(e) and 120;
In re Wertheim, 646 F.2d 527, 209 USPQ 554 (CCPA 1981) (U.S.
Patent prior art as of its filing date, unless parent application
describes claimed invention as required by § 112; invention
claimed in reference patent that does not find supporting

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disclosure in compliance with § 112, as required by § 120, in
parent application, cannot be regarded as prior art as of the
filing date of that parent application).
Whether subject matter claimed in a patent is described in a
parent application is a question of fact. In re Alton, 76 F.3d
1168, 1171, 37 USPQ2d 1578, 1580 (Fed. Cir. 1996). Insofar as we
can tell, Edwards preliminary motion 2 does not attempt to
establish, as a matter of fact, that the subject matter claimed
in Edwards '267 is described in '439 application. Edwards has
failed to establish, as was its burden, that Edwards '267 should
be considered prior art vis-a-vis LeVeen claims 43 and 44 as of
the November 8, 1993, filing date of the '439 application.
Accordingly, the anticipation issue will be restricted to
determining whether LeVeen claims 43 and 44 are anticipated by
Edwards '267. Since the filing date of the application which
matured into Edwards '267 is August 12, 1994 and LeVeen's
earliest possible effective filing date is March 24, 1995,
Edwards '267 is prior art vis-a-vis LeVeen under 35 U.S.C.
§ 102(e).
3.
Edwards preliminary motion 2 suffers from several of the
same procedural defects as Edwards preliminary motion 1. Edwards
preliminary motion 1 has beendismissed in a MEMORANDUM OPINION

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and ORDER (Paper 240) entered concurrently herewith. Edwards
preliminary motion 2 is likewisedismissed, essentially for the
same reasons except for the issue of anticipation based on
Edwards '267, which is prior art as of August 12, 1994.
Given our disposition of Edwards preliminary motion 1, a
reader might wonder why Edwards preliminary motion 2 likewise is
not being dismissed in its entirety. At oral argument, counsel
for LeVeen told us that LeVeen does not contest Edwards' position
that the claims are "anticipated." LeVeen opposition 2 (Paper
96) confirms, at least with respect to LeVeen claim 43, that
LeVeen concedes anticipation if Edwards '267 is prior art.
LeVeen maintains, however, that Edwards' 267 is not prior
art because in its preliminary statement LeVeen "has asserted an
actual reduction to practice of [the subject matter of] claims 43
and 44 prior to the filing date of Edwards '267 ***." There was
no similar LeVeen concession with respect to Edwards preliminary
motion 1. In fact, at oral argument, counsel for LeVeen argued
that Edwards preliminary motion 1 did not make out a	prima facie
case of anticipation or obviousness. A controlling difference
between Edwards preliminary motions 1 and 2 is that LeVeen
concedes a prima facie case of anticipation with respect to at
least LeVeen claim 43 and may be conceding anticipation of LeVeen
claim 44. LeVeen opposition 2, however, argues that LeVeen can
antedate Edwards '267. Accordingly, we exercise our discretion

Notice of the Chairman of the Board of Patent Appeals and	3
Interferences, Interferences--Preliminary Motions for Judgment	, 1118 Off.
Gaz. Pat. & Tm. Office 19-20 (Sep. 11, 1990).
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to consider Edwards preliminary motion 2, but only to the extent
it raises anticipation based on Edwards '267.
4.
What evidence does LeVeen present to antedate Edwards '267?
Based on our review of LeVeen opposition 2, it is apparent that
LeVeen is basing its antedating "effort" on allegations in its
preliminary statement--a document which alleges (i.e., pleads)
an actual reduction to practice prior to the filing date of
Edwards' '267.
Edwards responds by pointing out that a preliminary
statement cannot be used as evidence by the party filing the
statement. Rule 629(e) [37 CFR § 1.629(e)] supports Edwards'
response. Based on a lack of evidence, Edwards maintains that it
is entitled to prevail. In addition, relying on a notice	3
published in the Official Gazette, Edwards maintains that LeVeen
cannot use the preliminary statement as a "pleading" upon which
to urge that the issues raised by Edwards preliminary motion 2
should be deferred until priority evidence has been presented.

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5.
History will show that preliminary statements have been used
in interference cases as a basis for deferring to the priority
stage of the interference issues associated with alleged
unpatentability over the prior art.
a.
Forsyth v. Richards, 1905 Dec. Comm'r Pat. 115 (Comm'r.
Pat. 1905), reveals that a party could rely on its preliminary
statement in opposing what was then called a motion to dissolve
based on unpatentability over prior art. Forsyth was decided
before patentability based on prior art could be an issue in
interference cases. Glass v. DeRoo, 239 F.2d 402, 112 USPQ 62
(CCPA 1956) (only priority and issues ancillary to priority could
be considered in an interference; patentability over prior art
not ancillary to priority).
The rules applicable to (1) theForsyth interference and
(2) interferences up through the end of 1984 (37 CFR 1.201 et
seq. (1984)), authorized a motion to "dissolve" based on a party
applicant's claims allegedly being unpatentable over the prior
art. 37 CFR § 1.231(a)(1) (1984). The motion was considered by
the examiner, not the board. If the motion was denied, the
interference proceeded to priority. If the motion was granted,
the interference was "dissolved" (i.e., terminated without a

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judgment on the merits) and the applicant returned to	ex parte
prosecution where the examiner would enter a rejection based on
the examiner (not the board) having granted the motion to
dissolve. If as a result ofex parte prosecution, including any
appeals, the applicant ultimately succeeded in having the claim
held patentable, the interference would be reinstated or a second
interference might be declared.
If an opponent defended against a party's motion to dissolve
based on a § 102(a) or § 102(e) reference by calling attention to
an earlier date of invention alleged in a preliminary statement,
the motion would be "dismissed" and the case proceeded to the
priority phase. See, e.g., Simons v. Dunlop, 103 USPQ 237
(Comm'r Pat. 1949). At the time ofSimons, motions to dissolve
were heard by the primary examiner. An examiner of interferences
would review the motions and determine whether they were
procedurally proper to be transmitted to the examiner for
hearing. In Simons, the Commissioner held that the examiner of
interferences did not err in refusing to transmit a motion to
dissolve to the examiner for hearing.
The practical result of theForsyth and Simons practice was
that if the opponent lost on priority, the unpatentability issue
became moot. On the other hand, if the opponent prevailed on
priority, the patentability issue could be considered by the

It should be noted that prevailing on priority does not necessarily	4
mean that a party antedates a § 102(a) or § 102(e) reference.See Goutzoulis
v. Athale, 15 USPQ2d 1461, 1462 (Comm'r Pat. 1990), andIn re Moore, 444 F.2d
572, 578-79, 170 USPQ 260, 266 (CCPA 1971) andIn re Eickmeyer, 602 F.2d 974,
978-79, 202 USPQ 655, 660 (CCPA 1979), cited therein. There is a fundamental
difference between (1) establishing priority--which defeats the opponent's
right to a patent--and (2) antedating--which establishes a party's right to a
patent notwithstanding the existence of facially relevant prior art.
Accordingly, the requirements for establishing priority and antedating are
different, albeit in a particular case the same evidence may serve both to
establish priority and to antedate.
Notice of Final Rule, Patent Interference Practice, 49 Fed. Reg.	5
48416 (Dec. 12, 1984).
What were formerly known as "motions" under 37 CFR § 1.231 (1984),	6
are now referred to as "preliminary motions", 37 CFR § 1.633(a) (2000).
There are three kinds of motions which may be filed in an interference:
(1) preliminary motions under 37 CFR § 1.633(a), (2) motions to correct
inventorship under 37 CFR § 1.634 and (3) all other motions, which are
known as "miscellaneous motions" under 37 CFR § 1.635.
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examiner after the interference had been concluded.	4
Alternatively, the board might have made a recommendation to the
Commissioner under 37 CFR § 1.259 (1984). Cf. Bloom v. Furczyk,
144 USPQ 678 (Bd. Pat. Int. 1955).
b.
In 1984, Congress amended 35 U.S.C. § 135(a) and provided
that patentability may be an issue in interferences. The
amendment, in effect, legislatively renderedGlass v. DeRoo
inapplicable.
Under the "new" rules implementing the congressional	5
change, a party was authorized to file a preliminary motionfor	6
judgment. 37 CFR § 1.633(a) (1985). If properly presented in
accordance with 37 CFR § 1.637(a) (1985), any patentability issue
raised in the preliminary motion was decided by the board in the

Unlike the rules in effect prior to 1984, the new rules do not	7
contemplate entry of an order "dissolving" an interference.See Parks v.
Fine, 773 F.2d 1577, 227 USPQ 432 (Fed. Cir. 1985),amended on
reconsideration, 783 F.2d 1036, 228 USPQ 677 (Fed. Cir. 1986). Instead,
an interference is ordinarily terminated (1) by entry of a judgment on the
merits or (2) for lack of jurisdiction.
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interference. Thus, there was no longer a need to transmit	7
motions to the primary examiner.
The new rules, however, did not say what the effect of
filing a preliminary motion would be on the moving party where
the prior art appeared to be applicable to the moving party as
well as the opponent. See 37 CFR § 1.637(a). Nor did the new
rules say what effect, if any, would be given to preliminary
statements in the face of a Rule 633(a) preliminary motion for
judgment based on a § 102(a) or § 102(e) reference.
c.
There came a time when the Commissioner had an opportunity
to consider the effect of a preliminary statement vis-a-vis a
preliminary motion for judgment under 37 CFR § 1.633(a).
In Goutzoulis v. Athale, 15 USPQ2d 1461, 1463 (Comm'r Pat.
1990), it was determined that in cases where the preliminary
statement alleges a date of invention prior to the date of a
§ 102(a) or § 102(e) reference, a Rule 633(a) preliminary motion
for judgment should be deferred to the priority phase. During
the priority phase, a determination could be made as to whether

Notice of Final Rule, Patent Appeal and Interference Practice	,	8
60 Fed. Reg. 14488 (Mar. 17, 1995).
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an opponent had established a date of invention prior to any non-
statutory bar reference.
d.
Shortly after Goutzoulis, the Chairman of the Board of
Patent Appeals and Interferences issued the notice (n.2,	supra)
relied upon by Edwards.
For the most part, the notice attempted to tackle the
problem of what to do when the prior art relied upon by a party
to attack the patentability of its opponent's claims also was
prior art to the moving party. An elaborate procedure is set out
in the notice for dealing with such a situation.
The notice (1118 Off. Gaz. Pat. & Tm. Office at 20 n.1)
suggests that a preliminary statement might not be considered
when a preliminary motion for judgment under 37 CFR § 1.633(a) is
filed. Based on the footnote, Edwards argues that LeVeen cannot
rely on its preliminary statement.
e.
Subsequent events have overtaken the Chairman's notice.
The new rules were amended in 1995.	8

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Rule 633(a) was amended to state that when alleging
unpatentability, a party had to address each of its opponent's
claims individually. 37 CFR § 1.633(a) (1995).
Rule 637(a) was amended to state that when a party files a
preliminary motion for judgment based on prior art facially
applicable to the party, the party is obligated to state why the
grounds of unpatentability does not apply to the party. 37 CFR
§ 1.637(a) (1995). In addition, Rule 640(b) was amended to
provide that unless a decision on a preliminary motion would
materially advance an interference, decisions on preliminary
motions were to be deferred to final hearing. 37 CFR § 1.640(b)
(1995). In large measure, the 1995 amendments to the new rules
overtook the practice set out in the Chairman's notice. We
cannot recall a single Trial Section interference in which the
Chairman's notice has been applied.
For the reasons given, Edwards' reliance on the Chairman's
notice is misplaced.
f.
With the experience of prior practice as a guide, how should
preliminary statement "defenses" to preliminary motions alleging
unpatentability over § 102(a) or § 102(e) prior art be handled?
The use of preliminary statements as a "defense" to a
preliminary motion for judgment is not specifically covered by

There may be other choices which might make sense in a particular	9
case. We leave for another day any other choices and suggest that if there
are other choices that the parties discuss those choices in an	inter partes
conference call with the APJ designated to handle the interference.
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the rules. Accordingly, pursuant to 37 CFR § 1.610(e), the Trial
Section adopts the following practice. When (1) a preliminary
motion for judgment under 37 CFR § 1.633(a) against an opponent
relies on a § 102(a) or § 102(e) reference and (2) the opponent
alleges in its preliminary statement a date of invention prior to
the prior art dates of the reference, the opponent will be given
two choices.9
A first choice will be for the opponent to call attention to
its preliminary statement and ask that a decision on the
preliminary motion be deferred to the priority phase of the
interference. In effect, LeVeen has asked for this choice in its
opposition in this interference.
A second choice is for the opponent to present proofs under
37 CFR § 1.131 together with its opposition.
Each choice has advantages and disadvantages. An advantage
of the first choice may be that the antedating and priority
efforts may be put on at the same time.
A disadvantage of the first choice may be that evidence of
priority may end up inadmissible if the count is changed as a
result of an opponent's inability to antedate. To be fully
appreciated, the disadvantage requires further discussion and is

See, e.g., (1) In re Stempel, 241 F.2d 755, 760, 113 USPQ 77, 81	10
(CCPA 1957) (to antedate, applicant need show in Rule 131 affidavit only so
much of the claimed invention as the references disclose); (2)	In re Tanczyn,
347 F.2d 830, 146 USPQ 298 (CCPA 1965), (3)In re Hostettler, 356 F.2d 562,
148 USPQ 514 (CCPA 1966), (4)In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA
1966), (5) In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968), (6)In re
Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971), (7)In re Plumb, 470 F.2d
1403, 175 USPQ 323 (CCPA 1973), (8)In re Spiller, 500 F.2d 1170, 182 USPQ 614
(CCPA 1974) and (9) In re Schaub, 537 F.2d 509, 190 USPQ 324 (CCPA 1976).
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best discussed by reference to a hypothetical case. Suppose
moving senior Party A claims a process which uses a temperature
in the range of 20-75EC and that opponent junior Party B claims
the same process using a temperature in the range of 40-100	EC.
Party B also has a claim reciting a range of 40-80	EC. The count
would recite a temperature range of 20-100	EC. Party A relies on
a reference which is not prior art to Party A, but is prior art
under § 102(a) to Party B, and describes the same process
operating at a temperature of 98	EC. To antedate, Party B would
be required to comply with Rule 131 and the precedent applicable
thereto. Suppose Party B attempts to antedate by relying on an	10
actual reduction to practice of a method using a temperature of
82EC, which is not within the scope of Party B's narrow claim
calling for a temperature range of 40-80	EC. Further suppose that
Party B's proofs are not sufficient under Rule 131, but would
have been sufficient for priority. The difficulty will be that
Party B's broad claim calling for a range of 40-100	EC becomes
unpatentable and the count will have to be narrowed to cover a

The scope of the count would be changed from (1) a range of 20-100	EC	11
(the combined scope of the temperature ranges of both Party A and Party B) to
(2) a range of 20-80EC (the combined scope of the 20-75	EC range patentable to
Party A and the 40-80EC range patentable to Party B).
The Trial Section recently had a case where a party relied on a	12
specification which had been circulated to inventors for signature
(conception) coupled with diligence to the filing of an application. No
proprietary information was revealed to the opponent because the opponent
already had access to the party's application. All evidence was presented
through the testimony of the attorney.
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range of 20-80EC. Under these circumstances, proofs at a	11
temperature of 82EC are not admissible on the issue of priority
because they would not fall within the scope of the count.Eaton
v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir.
2000) (to establish an actual reduction to practice for the
purpose of priority, it must be established that (1) the party
constructed an embodiment or performed a process that met every
element of the count and (2) the embodiment or process operated
for its intended purpose).
An advantage of the second choice may be that Rule 131
showings do not need corroboration. In this respect, a showing
under Rule 131 may be viewed as easier than a showing for
priority. Moreover, proof under Rule 131 in a particular case
may minimize the need to reveal to the moving party proprietary
material, such as material in laboratory notebooks.	12
A disadvantage of the second choice may be that the opponent
may have to put on an antedating case followed by a priority case
and the evidence may be similar, albeit not identical.

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There may be other advantages and disadvantages for both the
first and second choices. Our decision leaves to the opponent to
sort out the advantages and disadvantages in a particular case
and for the opponent to make an election. If the opponent elects
to present a Rule 131 showing, and it is not successful, its
claims may be held to be unpatentable and any necessary
adjustment to the count will be made. Whether the opponent with
no patentable claims should then be allowed to put on a priority
case to defeat the moving party, and what the count should be for
that purpose, are matters which we leave for another day.Cf.
Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989).
C. Decision
Edwards preliminary motion 2 will be deferred to final
hearing only to the extent that it maintains that LeVeen claims
43 and 44 are anticipated by Edwards '267 based on its filing
date of November 8, 1993. The preliminary motion is otherwise
dismissed as being procedurally improper for the reasons given in
connection with our decision on Edwards preliminary motion 1.
The preliminary motion does not fairly place before LeVeen or the
board any issue under 35 U.S.C. § 103 or any issue of
anticipation based on any filing date of the '439 application.
During the priority testimony phase, LeVeen should make out
its antedating and priority cases.

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D. Order
Upon consideration of Edwards preliminary motion 2, and for
the reasons given, it is
ORDERED that Edwards Exhibit 5005 has been admitted in
evidence only to the extent that it is offered to prove that the
filing date of application 08/148,439 is November 8, 1993.
FURTHER ORDERED that Edwards preliminary motion 2 is
deferred to the priority phase of the interference, but only to
the extent that it maintains that LeVeen claims 43 and 44 are
anticipated by Edwards '267 based on its filing date of
November 8, 1993.

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FURTHER ORDERED that the preliminary motion is
otherwise dismissed.
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 ) TRIAL SECTION
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS AND
______________________________) INTERFERENCES
RICHARD TORCZON )
Administrative Patent Judge )
)
)
______________________________)
SALLY GARDNER-LANE )
Administrative Patent Judge )
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )

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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 Hwy.
Arlington, VA 22202
Tel: 703-413-3000
Fax: 703-413-2220