Stiller v. Heid

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 38
Filed by: Richard E. Schafer Filed:
Administrative Patent Judge 16 September 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
BERND STILLER
Junior Party,
(U.S. Application 09/101,663),
v.
HANS HEID and JEROME SEJOURNET
(Microm International Gmbh)
Senior Party
(U.S. Patent 5,895,628).
_______________
Patent Interference No. 105,044
_______________
DECISION ON JOINT MOTION FOR NO INTERFERENCE-IN-FACT
The parties have filed a joint motion under 37 CFR § 1.633(b) for judgment of no
interference-in-fact. The motion is denied without prejudice to refiling the motion within 21 days
of this decision.
An “interference-in-fact” is a term of art in interference practice. The rules define an
“interference-in-fact” as follows (37 CFR § 1.601(j)):
An interference-in-fact exists when at least one claim of a party that is
designated to correspond to a count and at least one claim of an opponent that is
designated to correspond to the count define the same patentable invention.
The rules define “same patentable invention” and “separate patentable invention” as follows (37
CFR§ 1.601(n)):

1 See Notice of Final Rule, 49 Fed. Reg. at 48440 (“Two comments questioned the nature of the
judgment when a mo tion under § 1.633(b ) is granted. Se ction1.63 3(b) autho rizes the filing of a [p reliminary] motion for
judgment on the ground that there is no inter ference-in-fact. If a [preliminary] motion under § 1.633(b) is granted, the
judgment would pro vide that eac h party is entitled to a patent containing that party's claims corresponding to the count.”)
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Invention “A” is the same patentable invention as an invention “B” when
invention “A” is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103)
in view of invention “B” assuming invention “B” is prior art with respect to
invention “A”. Invention “A” is a separate patentable invention with respect
to invention “B” when invention “A” is new (35 U.S.C. 102) and non-
obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B”
is prior art with respect to invention”A”.
Subparts (j) and (n) of Rule 601 implement holdings of the former Court of Customs and Patent
Appeals. See, e.g., Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977) (an interference-in-
fact held to exist between a claim to a method of using cyclopentadiene and a claim to a method
using butadiene, isoprene, dimethylbutadiene, piperylene, anthracene, perylene, furan or sorbic acid;
the claims were held to be directed to the same patentable invention even though they did not overlap
in scope). See also Notice of Final Rule, Patent Interference Cases, 49 Fed. Reg. 48416 (Dec. 12,
1984) (see Examples 16 at 48421 and Example 20 at 48424).
An issue of whether an interference-in-fact exists is placed before the board by the filing of
a preliminary motion under 37 CFR § 1.633(b). If the preliminary motion is granted, both parties
would be entitled to a patent containing their respective claims initially designated as corresponding
to the count because those claims would be determined to be directed to separate patentable
inventions.1
Resolution of an interference-in-fact issue involves a two-way unpatentability analysis. The
claimed invention of Party A is presumed to be prior art vis-a-vis Party B and vice versa. The
claimed invention of Party A must anticipate or render obvious the claimed invention of Party B and
the claimed invention of Party B must anticipate or render obvious the claimed invention of Party
A. When the two-way analysis is applied, then regardless of who ultimately prevails on the issue of
priority, the Patent and Trademark Office (PTO) assures itself that it will not issue two patents to
the same patentable invention.
The declaration of an interference raises a rebuttable presumption that an interference-in-fact
exists between the parties’ claims. A party filing a preliminary motion under 37 CFR § 1.633(b) has

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the burden of proof. 37 CFR § 1.637(a). That burden can be met by establishing, prima facie, that
the party is entitled to the relief requested. The fact that a preliminary motion is effectively
unopposed does not relieve the parties of meeting the burden of establishing that they are prima facie
entitled to relief. In this case, the parties have filed a joint motion so the burden rests on both parties.
A preliminary motion for a judgment of no interference-in-fact must establish that “two-way”
patentability is lacking, i.e., that none of the claims of one party which correspond to the count are
the same patentable invention as the opponent’s claims corresponding to the count. In terms
§ 1.601(n), it must be establish that all of the claims of one party are new and non-obvious when the
opponents claims are taken as prior art.
Section 1.601(n) incorporates the obviousness standard of 35 U.S.C. § 103. Thus, in making
a determination as to whether one claim is directed to the same patentable invention as another, all
the considerations necessary in reaching a conclusion as to obviousness vel non come into play.
Obviousness is a legal conclusion based on the factual inquiries set forth in Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966): (1) the scope and content of the prior art; (2) the differences between
the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary
considerations, if any, of nonobviousness. This conclusion is reached from the perspective of the
hypothetical person having ordinary skill in the art who presumed to be aware of all the pertinent
prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454, 227 USPQ 293, 297(Fed.
Cir. 1985). Thus, the evaluation of obviousness is not made in a vacuum, but requires consideration
of the pertinent prior art and level of ordinary skill in the art.
In typical situations involving obviousness, such as ex parte examination or a civil action for
patent infringement, the burden is on the party asserting that the claimed subject matter would have
been obvious. This burden is a positive one which may be carried by submitting evidence including
prior art references which serves to delineate the scope and content of the prior art, the level of skill
in the art and the differences between the claimed subject matter and the prior art. In the typical
obviousness scenario a single prior art reference, “the primary reference,” is used as a basis for
determining differences. The primary reference is also evidence of the scope and content of the prior
art and the level of ordinary skill in the art. Other evidence including additional or “secondary
references” are relied upon to further delineate the scope and content of the prior art and the level
of ordinary skill in the art.

2 The consideration of the scope and content of the prior art, of course, may be side-stepped by proving
one or m ore of the sec ondary co nsiderations of non-ob viousness. H owever, tha t was not the ap proach ta ken here.
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The situation involving a preliminary motion for judgment of no interference-in-fact is
different. The moving party bears the burden of proof and must establish a negative –that the claims
of one party are non-obvious from the subject matter of the opponent’s claims when each of the
opponent’s claims is treated as prior art. 37 CFR §§ 1.601(j) and 1.601(n). In the analysis for no
interference-in-fact, the claims of one party become the primary references. A comparison of the
“primary references” with the opponent’s claims delineates the differences. Once the differences
are identified the movant must establish that the differences do not render the opponent’s claimed
subject matter as a whole obvious in light of the scope and content of the prior art and the level of
ordinary skill in the art2.
This burden placed upon the movant by 37 CFR § 1.637(a) could be construed to require
proof that there is no prior art that when combined with the opponent’s claims would render the
party’s subject matter as a whole obvious. This burden would be unreasonable and is most likely
impossible to meet. It would also be inconsistent with 37 CFR § 1.601 which provides that the rules
should be construed to secure the just, speedy and inexpensive determination of interferences.
However, the obviousness determination must be made from the perspective of the hypothetical
person of ordinary skill who is presumed to have knowledge of all the pertinent prior art. Thus,
consideration of the prior art and the level of ordinary skill in the art can not be totally avoided.
Therefore, a movant must provide some evidentiary basis for consideration of the obviousness of
the invention in light of the scope and content of the prior art and the level of ordinary skill in the
art. This might be done by testimony of a person skilled in the particular art (such as an inventor)
that he is unaware of any prior art or other reasons that would teach or suggest modifying the subject
matter of the opponent’s claims to account for the differences. The “other reasons” would include
knowledge that any modifications necessary to the opponent’s claims do not reflect conventional or
routine practices or other matters well known in the art. This standard applies to both opposed and
unopposed motions.
Where the evidence is sufficient, the movant will have established a prima facie case. Where
the burden of proof is met by the movant and the motion is opposed, the burden of production and

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persuasion would be shifted to the opponent. The opponent could meet this burden by submitting
evidence which could include prior art references which would show that the movant’s claimed
subject matter as a whole would be obvious notwithstanding any differences.
The parties jointly move for a ruling of no interference-in-fact. Their motion points out that
none of Stiller’s involved claims are identical to any of Heid’s involved claims. The parties also
point out that Heid’s claims include limitations not present in any of Stiller’s claims. The motion
further identifies certain benefits said to flow from the limitations. The parties then argue that the
limitations are not “recited or suggested” by Stiller’s claims and would, therefore, be both novel and
non-obvious.
The parties support their position by the joint declaration testimony of Hans Heid and Helmut
Goldbecker. Exhibit 1001. The testimony parallels the parties’ motion in identifying certain
limitations not present in Heid’s claims and then testify that, based upon their knowledge and
experience none of the Stiller claims recite or suggest the limitations present in Heid’s claims.
The parties have failed to establish that they are prima facie entitled to a ruling of no
interference-in-fact. The arguments and testimony focus only on a comparison of the subject matter
of Heid’s and Stiller’s claims. The parties have not provided evidence related to the scope and
content of the prior art or the level of ordinary skill in the art. Merely comparing a party’s claims
with the opponents and identifying differences without providing evidence relating to the scope and
content of the prior art and the level of ordinary skill in the art does not meet the burden of
establishing prima facie non-obviousness. See Aelony, 547 F.2d 566, 192 USPQ 486 (CCPA 1977).
Thus, the declaration does not establish that the declarants are unaware of any basis in the prior art
or level of skill in the art that would suggest modifying the subject matter of Stiller’s involved
claims.
The parties’ preliminary motion for no interference-in-fact is denied without prejudice to
submitting a renewed motion with additional evidence within 21 days of this order.
Richard E. Schafer
Administrative Patent Judge
Counsel for Heid: Anthony M. Zupcic, FITZPATRICK, CELLA, HARPER & SCINTO.
Counsel for Stiller: Frederick J. Dorchak, COLLARD & ROE, P.C.