Thomas v. Pippin

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BoxInterferences@uspto.gov 	Paper 97
Telephone: 571-272-4863 	Entered: March 6, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
Patent Interference 105,801 (JL)
Technology Center 2100
C. DOUGLASS THOMAS and ALAN E. THOMAS
Junior Party
U.S. Patent 5,752,011
v.
JACK D. PIPPIN
Senior Party
Application 10/464,482
Before: JAMES DONALD SMITH, Chief Administrative Patent Judge,
JAMES T. MOORE, Deputy Chief Administrative Patent Judge, and
FRED E. McKELVEY, JAMESON LEE, SALLY GARDNER LANE,
MICHAEL R. ZECHER and JUSTIN T. ARBES, Administrative Patent Judges.
McKELVEY, Administrative Patent Judge.
DECISION ON PIPPIN MISCELLANEOUS MOTION 1
1 	Pippin Miscellaneous Motion 1 (Paper 80) seeks entry of an order by the
2 	Board accepting for filing in the interference file a request to convert the involved
3 	Pippin application to a SIR (Statutory Invention Registration—35 U.S.C. § 157).
4 	The Pippin SIR request accompanied the motion. Ex 1011.
5 	Thomas has timely opposed. Paper 95.
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Pippin has timely replied. Paper 96.
Background
The facts are straightforward.
The interference was declared on 11 April 2011. Paper 1.
There came a time when Thomas filed Thomas Motion 1 seeking entry of
an order designating some (but not all) of the involved Thomas claims as not
corresponding to the count. Paper 36.
Thomas also advised the Board that it would not be filing (1) a priority
statement [formerly referred to as a preliminary statement] or (2) a motion for
judgment based on priority. Paper 31.
In its Decision on Motions, a merits panel (Judges Lee, Zecher and Arbes)
held that Thomas was not entitled to the relief requested in Thomas Motion 1.
Paper 76. Accordingly, Thomas Motion 1 was denied. Paper 76, page 21.
Since Thomas as junior party had advised the Board that a motion for
judgment based on priority would not be filed, the Board entered a judgment
against Thomas as to Count 1. Paper 77. If the Board’s judgment becomes final,
the result will be cancellation of all claims in the involved Thomas patent which
correspond to Count 1.
Thomas filed a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit. Paper 78.
Upon filing of the notice of appeal from a final decision of the Board,
jurisdiction over an interference transferred from the Board to the Federal Circuit.
Loshbough v. Allen, 359 F.2d 910 (CCPA 1966) (jurisdiction attaches in strict
sense when notice of appeal is filed; nevertheless a PTO board may exercise a
purely ministerial function after filing of the notice of appeal).
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Discussion
Issue 1: Whether the Board has authority in an interference to grant a party
leave to file in an interference file a request to convert an involved application to a
SIR after the filing of a notice of appeal to the Federal Circuit seeking review of a
final decision by the Board in the interference?
Issue 2: Assuming the Board has authority to grant leave to file the request,
should the Board exercise its discretion and grant leave?
Why is there a need to determine at this time whether Pippin should be
granted leave to file a SIR? At the present time, a prevailing applicant in an
interference is free to file a request to convert its application to a SIR. 35 U.S.C.
§ 157; 37 CFR § 1.293(a) (“An applicant for an original patent may request, at any
time during the pendency of applicant’s pending complete application, that the
specification and drawings be published as a . . . [SIR].” (italics added)).
However, effective 16 March 2013, § 157 will be repealed. Filing of a SIR after
16 March 2013 will no longer be possible. Leahy-Smith America Invents Act,
Pub. L. 112-29, 125 Stat. 284, § 3(e) (2011):
(e) Repeal of Statutory Invention Registration-
(1) IN GENERAL -- Section 157 of title 35, United States
Code, and the item relating to that section in the table of sections for
chapter 14 of title 35, United States Code, are repealed.
(2) REMOVAL OF CROSS REFERENCES -- Section
111(b)(8) of title 35, United States Code, is amended by striking
“sections 115, 131, 135, and 157” and inserting “sections 131 and
135”.
(3) EFFECTIVE DATE -- The amendments made by this
subsection shall take effect upon the expiration of the 18-month
period beginning on the date of the enactment of this Act
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1 	[16 September 2012], and shall apply to any request for a statutory
2 	invention registration filed on or after that effective date.
3 	Subsection (e) takes effect on 16 March 2013.
4 	Accordingly, Pippin cannot file a SIR request on or after 16 March 2013.
5 	The mere filing of a SIR request with the Board related to an application
6 	involved in an interference while the interference is before the Federal Circuit is
7 	believed to involve a mere ministerial act within the meaning of Loshbough v.
8 	Allen. Pippin is not asking the Board (or for that matter the Patent Corps) to act on
9 	its proposed SIR request. At the present time, since the involved Pippin
10 	application is involved in the interference, we see no reason not to permit the
11 	ministerial filing of the SIR request in the interference file itself. 37 CFR § 41.103
12 	(within the agency, the Board acquires jurisdiction over any involved application
13 	file upon initiation of a contested case). A declared interference is a contested
14 	case. 	37 CFR § 41.203(b).
15 	Any action before the Board which would interfere with proceedings in the
16 	Judicial Branch would not be consistent with precedent and needed comity
17 	between the Executive and Judicial Branches while each attends to its respective
18 	statutory assigned duties. Those duties include (1) resolution of the interference by
19 	the Board in the first instance (35 U.S.C. § 135(a)1) and (2) resolution of an appeal
20 	from the Board by the Federal Circuit in the second instance (35 U.S.C. § 1412).
1 	Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed. Cir. 1998) (determination of priority
of invention is resolved in the first instance in administrative proceedings before
the Board in accordance with 35 U.S.C. § 135(a) ("The Board . . . shall determine
questions of priority of the inventions and may determine questions of
patentability.")
2 	“A party to an interference dissatisfied with the decision of the Board . . . on the
interference may appeal the decision to the . . . Federal Circuit . . . .” 35 U.S.C.
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1 	We perceive of no legitimate reason why authorizing the mere filing of a SIR
2 	request in the interference file would interfere in any manner with proceedings and
3 	deliberations by the Federal Circuit with respect to the presently pending appeal or
4 	the Pippin application involved in that appeal. If we felt otherwise, we would deny
5 	the motion.
6 	Because the filing of the SIR request is viewed as a ministerial action, we
7 	hold that we have authority to authorize Pippin to file its SIR request.
8 	Because at this time Pippin has not asked the Board to take any action on its
9 	SIR request we see no reason not to exercise our discretion, consistent with
10 	37 CFR § 1.293(a), to authorize Pippin to file its SIR request at this time.
11 	Nothing in this opinion should be construed as suggesting what action
12 	ultimately will or should be taken on the Pippin SIR request after conclusion of
13 	proceedings before the Federal Circuit.
14 	Thomas timely filed an opposition. Paper 95.
15 	According to Thomas, Pippin Miscellaneous Motion 1 is not timely filed.
16 	Paper 95, page 2. The involved Pippin application is a complete application within
17 	the meaning of 37 CFR § 1.293(a). Rule 293(a) provides that a request to convert
18 	the application to a SIR may be filed at any time during pendency of an
19 	application. Pippin’s filing of a request (Ex 1011) to convert its application to a
20 	SIR is therefore timely. It may be true that Pippin might have elected to file its
21 	request at some earlier time. However, under § 157 and Rule 293(a), an applicant
22 	may decide when within pendency of its application to file a request for a SIR.
23 	Thomas maintains that the Board lacks jurisdiction to accept the Pippin
24 	request to convert its application to a SIR. Paper 95, page 4-6. According to
§ 141. The Federal Circuit’s mandate and opinion “shall govern the further
proceedings in the case.” 35 U.S.C. § 144.
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Thomas, granting Pippin’s motion is more than just permitting a request for a SIR
to be filed. Rather, maintains Thomas, “it is the effect of those papers.” Paper 95,
page 5:19-20. Thomas apparently views the mere filing of a request for a SIR as
“a conversion” of an application to a SIR. Paper 95, page 6:2.
Upon the filing of a request for a SIR, an examination takes place. 37 CFR
§ 1.294(a). Applicant will be notified of the results of any examination. 37 CFR
§ 1.294(b). 	Upon successful completion of any examination, applicant is notified
of an intent to publish a SIR. 37 CFR § 1.294(c). An examination of Pippin’s SIR
request cannot take place at this time before an examiner because jurisdiction
within the agency over the Pippin application is with the Board. 37 CFR § 41.103.
At the present time, however, the Board lacks jurisdiction to engage in any action
on the merits because an appeal has been taken to the Federal Circuit. Loshbough
v. Allen, supra. The earliest time that any action on the merits of the Pippin SIR
request can occur in the agency would be after the Federal Circuit issues its
mandate. 35 U.S.C. § 144. Until the mandate is received, the Pippin application
remains an application. Thus, the status of the Pippin application as a pending
application as opposed to any potential SIR remains unchanged until Federal
Circuit proceedings are concluded.
Both Pippin (Paper 80, page 8) and Thomas (Paper 95, pages 7-9) discuss
Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998). Hyatt v. Boone does not involve
facts where Boone sought leave to file a request for a SIR during pendency of a
Federal Circuit appeal. The relevant precedent is Loshbough v. Allen, supra.
Order
Upon consideration of Pippin Miscellaneous Motion 1 (Paper 80), and for
the reasons given, it is
ORDERED that Pippin Miscellaneous Motion 1 is granted to the
extent that the Board accepts for filing only in the interference file (and not at this
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1 	time in the involved Pippin application file) the Pippin SIR request (Ex 1011)
2 	which accompanied the motion.
3 	FURTHER ORDERED that Pippin Miscellaneous Motion 1 is
4 	otherwise denied.
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1 	By Electronic Transmission
2
3 	To Junior Party Thomas:
4
5 	Richard A. Neifeld, Esq.
6 	Robert W. Hahl, Esq.
7 	Neifeld IP Law, PC
8 	rneifeld@neifeld.com
9 	rhahl@neifeld.com
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11 	To Senior Party Pippin:
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13 	R. Danny Huntington, Esq.
14 	William N. Hughet, Esq.
15 	Rothwell, Figg, Ernst & Manbeck, PC.
16 	dhuntington@rothwellfigg.com
17 	whughet@rothwellfigg.com
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