Rohr v. McNulty

1 Accorded benefit for priority of the filing date of its application,
09/361,210, July 29, 1999. According to Rohr, the real party in interest is
Zimmer Technologies, Inc.
2 Accorded benefit for priority of application 60/088,729, filed June 10,
1998. According to McNulty, the real party in interest is DuPuy Orthopaedics,
Inc.
Not binding precedent of the Board. Paper 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
WILLIAM ROHR,
Junior Party,
(Patent 6,143,232)1,
v.
DONALD E. McNULTY and TODD SMITH,
Senior Party
(Application 09/328,080)2.
_______________
Patent Interference 104,804 (Nagumo)
_______________
DECISION ON McNULTY REQUEST FOR RECONSIDERATION
Before: LEE, SPIEGEL, and NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
Introduction
McNulty requests reconsideration of that part of a panel
decision (Paper No. 36) dismissing without prejudice McNulty's
preliminary motion 2 to add claims corresponding to the count to
its application. The decision has been reconsidered, but relief
from that decision is denied.

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Rohr v. McNulty
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McNulty's Request
1. McNulty argues that it has complied with the
requirements set out in 37 C.F.R. § 1.637(c)(2)for its motion
under 37 C.F.R. § 1.633(c)(2), and is therefore entitled under
the rules to the relief requested. (Paper 38 at 1.)
2. McNulty argues further the rules, "which are
substantive rules promulgated under the notice and hearing
requirements of the Administrative Procedure Act, 5 USC 701 et
seq.," are binding on the Board and the public. (Id.)
3. McNulty reasons that, in promulgating the rule, "[t]he
Commissioner must have intended motions under 37 CFR 1.633(c)(2)
to 'materially advance the resolution of this interference,' or
the rule would not exist." The board's recourse, according to
McNulty, is to seek a rule change, not to deny "a proper motion
for reasons not contemplated by the rules." (Id. at 2.)
4. Finally, McNulty urges that it seeks a complete
judgment from the Board that authorizes "the issuance of a patent
to McNulty containing the claims to which motion No. 2 is
directed. 37 CFR 1.633(c)(2) contemplates just such a result."
(Id.) McNulty urges that its ability to present the claims to
the examiner after the interference [assuming McNulty emerges as
the prior inventor] may greatly extend its quest for a patent,

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and thus, it has presented good reasons beyond the reasons set
forth in the rules for the grant of its motion. (Id. at 2–3.)
Discussion
Mere compliance with the terms of a rule does not entitle
the movant to the relief sought. Hillman v. Shyamala, 55 USPQ2d
1220, 1221 (Bd. Pat. App. & Interf. 2000). Compliance with the
terms of 1.637 assures that a motion will not be dismissed for
procedural infirmities. In this case, McNulty sought this
interference by filing a request for continued examination (RCE),
including a set of claims it stated were substantially copied
from Rohr's U.S. Patent No. 6,143,232, together with a request
for a declaration of interference. (McNulty involved
application, Paper No. 13, filed June 4, 2001.) Additional
claims could have been submitted at that time. This is not a
case in which an applicant was haled into an interference without
advance knowledge of precisely what subject matter would be at
stake. Moreover, to the extent that McNulty's preliminary
motion 2 is responsive to Rohr's preliminary motion 2 for
judgment based on prior art (see McNulty's preliminary motion 2,
Paper No. 25 at 2, first sentence), we note our denial of Rohr's
motion has removed that basis for relief. McNulty has not
established that it needs the additional claims in its case for

Interference 104,804 Paper No. 39
Rohr v. McNulty
3 Former section 6 has been recodified at 35 U.S.C. § 2(b)(2)(A)(1999): "The
Office * * * may establish regulations, not inconsistent with law, which shall
govern to conduct of proceedings in the Office . . .".
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its priority contest vis-à-vis Rohr, or that it has been
disadvantaged in that contest by our dismissal of its motion.
The interference rules were promulgated under 35 U.S.C. § 6
(1984). 37 C.F.R. Part 1, subpart E. Former3 section 6 did not
provide substantive rulemaking authority. E.g., Merck v.
Kessler, 80 F.3d 1543, 1549–50, 38 USPQ2d 1347, 1351 (Fed. Cir.
1996). In any event, the particular rule under which McNulty
seeks relief is clearly procedural in nature, as it expressly
permits a party to move to add claims corresponding to the count
to its application. Denying McNulty's motion does not deny any
substantive right to McNulty: it merely postpones the time when
McNulty may seek patent protection for certain subject matter.
McNulty has not advanced a persuasive reason to increase the
complexity, time, and expense of this inter partes proceeding to
the parties and to the board by adjudicating its additional
claims. Thus, in our judgment, the general mandate that "[t]his
subpart shall be construed to secure the just, speedy, and
inexpensive determination of every interference" (37 C.F.R.
§ 1.601) is better met by dismissing McNulty's motion, without
prejudice, than by granting it. Accordingly, we have exercised
our discretion to maximize the efficient use of the limited

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resources of the Director in this particular case by leaving the
examination of original claims where it is done best, before the
examiner.
The job of the examining corps is to examine claims in
applications for patent in the first instance. With experience,
an examiner gains a greater familiarity and depth of knowledge of
the art he or she examines than, except by coincidence, an
administrative patent judge happens to have. We do not subscribe
to McNulty's parade of horrible potentialities allegedly
associated with ex parte procecution. McNulty has not
substantiated its fears by directing our attention to any facts
in the prosecution record. Nor has McNulty shown that it will be
prejudiced by our decision. Should McNulty be determined to be
the first inventor at the conclusion of the priority phase of
this interference, nothing will prevent it from seeking further
patent protection of its invention.
Order
Upon reconsideration of the decision on motions (Paper
No. 36), it is:

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ORDERED that McNulty’s request for relief from the decision
is denied.
JAMESON LEE )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS AND
CAROL A. SPIEGEL ) INTERFERENCES
Administrative Patent Judge )
) INTERFERENCE
MARK NAGUMO ) TRIAL SECTION
Administrative Patent Judge )
Entered: 6 March 2003
Attorney for Rohr
(real party in interest
Zimmer Technology, Inc.):
John F. Hoffman, Esq.
Todd A. Dawson, Esq.
BAKER & DANIELS
Jacque Wilson, Esq.
ZIMMER, INC.
Attorney for McNulty
(real party in interest
DePuy Orthopaedics, Inc.):
Barry E. Bretschneider, Esq.
Peter J. Davis, Esq.
MORRISON & FOERSTER LLP