Spalding v. Hartsell

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
AND IS NOT BINDING PRECEDENT OF THE BOARD
Paper No. 92
Filed by: Trial Section Motions Panel
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
ROBERT G. SPALDING
Junior Party
(Patent No. 5,195,564),
v.
HAL C. HARTSELL JR. and
KENNETH L. POPE,
Senior Party
(Application 08/033,311)
Patent Interference No. 104,699
Before LEE, TORCZON and GARDNER-LANE, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON SPALDING'S PRELIMINARY MOTION 2
Spalding's preliminary motion 2 is denied.
Findings of Fact
1. This interference was declared on April 27, 2001.
2. Junior party Spalding is involved on the basis of its
Patent No. 5,195,564.

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3. Senior party Hartsell is involved on the basis of its
Application 08/033,311.
4. There are two counts, Count 1 and Count 2, in this
interference.
5. At the time of declaration of this interference, the
claims designated as corresponding to Count 1 were Spalding's
patent claims 1-6 and Hartsell's application claim 22, and the
claims designated as corresponding to Count 2 were Spalding's
patent claims 7 and 8 and Hartsell's application claims 28
and 29.
6. Junior party Spalding's real party in interest is
Dresser Industries, Inc.
7. Senior party Hartsell's real party in interest is
Marconi Communication Systems, Inc.
8. On September 6, 2001, junior party filed preliminary
motion 2 (Paper No. 50) for judgment against senior party's
claims 22, 28 and 29 on the ground that they are unpatentable
over the "Bergamini Paper" under 35 U.S.C. § 102(b) and/or 103(a)
alone or in combination with U.S. Patent No. 4,522,237.
9. The "Bergamini Paper" is entitled "Analysis of
Hydrocarbon Evaporative Emission Recovery in Relation to Stage II
- Onboard Alternatives," and a copy of this paper is provided by
party Spalding as its Exhibit 2012.

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10. Senior party Hartsell's involved application 08/033,311
was filed on March 15, 1993, and has been accorded the benefit of
application 07/946,741, filed September 16, 1992; application
07/824,702, filed January 21, 1992; and application 07/625,892,
filed December 11, 1990.
11. Junior party Spalding's involved Patent No. 5,195,564
is based on application 07/693,549, filed April 30, 1991.
12. Junior party Spalding's preliminary motion 2 does not
allege any specific date after which the Bergamini paper
according to party Spalding should be regarded as a printed
publication under 35 U.S.C. § 102.
13. Junior party Spalding's preliminary motion 2 does not
include an explanation as to why the prior art asserted against
senior party Hartsell in Spalding's preliminary motion 2 does not
apply to Spalding's claims corresponding to the count.
14. In pertinent part, 37 CFR § 1.637(a) states:
If a party files a motion for judgment under § 1.633(a)
against an opponent based on the ground of
unpatentability over prior art, and the dates of the
cited prior art are such that the prior art appears to
be applicable to the party, it will be presumed,
without regard to the dates alleged in the preliminary
statement of the party, that the cited prior art is
applicable to the party unless there is included with
the motion an explanation, and evidence if appropriate,
as to why the prior art does not apply to the party.
Discussion
A party filing a motion has the burden of proof to show that
it is entitled to the relief sought in the motion. 37 CFR

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§ 1.637(a). Behr v. Talbott, 27 USPQ2d 1401, 1407 (Bd. Pat. App.
& Int. 1992); see also Kubota v. Shibuya, 999 F.2d 517, 27 USPQ2d
1418 (Fed. Cir. 1993). Spalding's preliminary motion 2 on page 2
asserts that Hartsell's applications claims 22, 28 and 29 are
unpatentable over "the Bergamini Paper under 35 U.S.C. § 102(b)
and/or 103(a) alone or in combination with U.S. Patent No.
4,522,237." A prerequisite to any merit in Spalding's
preliminary motion 2, even prior to examination of the
substantive content of the Bergamini paper, is that it must
constitute a "printed publication" under 35 U.S.C. § 102/103.
Accordingly, we focus first on this issue of "printed
publication."
Spalding in its preliminary motion 2 asserts that the
Bergamini paper is a prior art printed publication under
35 U.S.C. § 102(b). In that connection, Spalding states that
"Bergamini distributed his paper 'widely and publicly' to
individuals, organizations, and companies interested in vapor
recovery systems." The preliminary motion does not explain,
however, how it is that the board should find that Bergamini so
widely and publicly distributed his paper to the public
interested in that art that the paper should be deemed a printed
publication. As support for the assertion, the preliminary
motion refers to four exhibits, i.e., Exhibits 2013, 2014, 2015
and 2019, the first three of which are affidavits of Giorgio

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Bergamini, Carlo Cucchi, and Francesco Cavallino, respectively.
The preliminary motion does not explain how the cited evidence
supports Spalding's ultimate conclusion that the Bergamini paper
constitutes a printed publication or that Bergamini distributed
his paper "widely and publicly" to "individuals, organizations,
and companies interested in vapor recovery systems." The
citation to the exhibits merely invites the opponent and the
decision-maker to sift through the evidence on their own
initiative and to draw their own conclusions based on their own
manner of harnessing, interpreting, and characterizing the
evidence.
Moreover, the citations are to entire exhibits as a whole,
and not to any particular section or paragraph thereof, and the
citations are used to support the ultimate conclusion rather than
any particular underlying fact necessary for reaching the
ultimate conclusion. The entire argument portion of Spalding's
preliminary motion 2 attempting to establish the Bergamini paper
as a printed publication reads as follows:
A. Bergamini Paper Is A Prior Art Publication Under 35
U.S.C. § 102(b)
Bergamini was trying to persuade the industry and
regulatory representatives to embrace the system
described in the Bergamini Paper. Exhibit 2013, ¶ 14.
To accomplish this objective, Bergamini distributed his
paper "widely and publicly" to individuals,
organizations, and companies interested in vapor
recovery systems. Exhibits 2013, 2014, 2015 and 2019.
The "wide and public" distribution of the Bergamini
Paper qualifies it as prior art under 35 U.S.C. §

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102(b). Mass. Inst. of Tech. v. Pharmacia AB, 774 F.2d
1104, 227 U.S.P.Q. 428 (Fed. Cir. 1985); Friction
Division Prod., Inc. v. E.I. Dupont de Memours & Co.,
Inc., 658 F.Supp. 998, 3 U.S.P.Q.2d 1775 (D. Del.
1987), aff'd 883 F.2d 1027, 12 U.S.P.Q.2d 1575 (Fed.
Cir. 1989); Garrett Corp. v. United States, 422 F.2d
874, 164 U.S.P.Q. 521 (Ct. Cl. 1970). (Emphasis added.)
Note that the above-quoted text does not even indicate the date
at or subsequent to which Spalding would regard the Bergamini
paper as a printed publication.
Even assuming that explanations about why the board should
find that Bergamini had widely and publicly distributed his paper
to persons of ordinary skill in the art and how the evidence
supports the ultimate conclusion that the Bergamini paper is a
printed publication are contained in the affidavits and other
cited evidence, it would mean Spalding has improperly
incorporated arguments by reference to the affidavits and
evidence. Incorporation of arguments by reference is prohibited.
Spalding had ample notice that incorporation of arguments by
reference to declaration or affidavit testimony or other evidence
is not permitted.
Specific actual notice exists by way of ¶ 13 of the STANDING
ORDER (Paper No. 2) mailed to the parties at the time of
declaration of this interference:
13. Prohibition against incorporation by
reference
Arguments presented in one paper shall not be
incorporated by reference to another paper.

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The purpose of this requirement is to minimize the
chance that an argument will be overlooked and to
maximize the efficiency of the decision-making process.
In this respect, the Trial Section adopts as its policy
the followng rationale of DeSilva v. DeLeonardi, 181
F.3d 865, 866-67 (7th Cir. 1999): "[a]doption by
reference amounts to a self-help increase in the length
of the * * * brief * * * [I]ncorporation by reference
is a pointless imposition on the court's time. A brief
must make all arguments accessible to the judges,
rather than ask them to play archaeologist with the
record."
Further notice also exists by way of a precedential decision
of the Interference Trial Section, LeVeen v. Edwards, 57 USPQ2d
1406 (Bd. Pat. App. & Int. 2000). Part C1(a) of that opinion is
reproduced below, LeVeen, 57 USPQ2d at 1412:
C. Opinion
1. Failure to follow applicable procedure
a.
Edwards, contrary to ¶ 13 of the NOTICE
DECLARING INTERFERENCE, has incorporated
"arguments" from the Siperstein and Sheehan
declarations (Exs 5010 and 5015) into Edwards
preliminary motion 1. Edwards misperceives
the role of motions and evidence.
Declarations are evidence. A motion is
supposed to (1) lay out all relevant facts,
with reference to the evidence which supports
the facts, and (2) present an argument why
the facts justify any relief requested in the
motion.
The NOTICE DECLARING INTERFERENCE
explicitly precludes incorporation by
reference of arguments. There are numerous
reasons why an agency, in general or in a
particular case, may preclude incorporation

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by reference in papers presented to the
agency. First, an incorporated argument may
be overlooked (Paper 1, page 10 n.7).
Second, incorporation of arguments is not
consistent with efficient decisionmaking
(Paper 1, page 10 n.7). Essentially,
incorporation by reference is an
inappropriate role-shifting technique which
makes it a decisionmaker's job to (1) scour
the record, (2) come up with some theory
which supports a party's case and (3)
articulate a rationale in an opinion
supporting the rationale without giving an
opponent a reasonable chance to address the
rationale. Third, through incorporation by
reference an attorney can avoid page
limitations applicable to motions (Paper 1,
page 27 ¶ 28). Compare DeSilva v.
DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
1999) ("[a]doption by reference amounts to a
self-help increase in the length of the ***
brief. *** [I]ncorporation by reference is
a pointless imposition on the court's time.
A brief must make all arguments accessible to
the judges, rather than ask them to play
archaeologist with the record.").
We recognize in this particular case
that both the preliminary motion and the
declarations are short. Hence, it can be
argued that there was no undue burden on the
opponent or the board to look collectively at
both documents. The contrary argument is
that the procedure applicable to this
interference is otherwise and that it would
have been no undue burden for Edwards to have
complied with the applicable procedure.
We follow the above-quoted principles and views set forth in
LeVeen v. Edwards (Paper No. 240) and reiterate two points A and
B for emphasis:
A.
[Spalding] misperceives the role of motions and
evidence. Declarations [and affidavits] are evidence.

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A motion is supposed to (1) lay out all relevant facts,
with reference to the evidence which supports the
facts, and (2) present an argument why the facts
justify any relief requested in the motion.
B.
Incorporation by reference is an inappropriate
role-shifting technique which makes it a
decisionmaker's job to (1) scour the record, (2) come
up with some theory which supports a party's case and
(3) articulate a rationale in an opinion supporting the
rationale without giving an opponent a reasonable
chance to address the rationale.
We decline to abandon our role as impartial and unbiased
judges to take on the role of an advocate on behalf of party
Spalding, to analyze the evidence in the first instance to see
how it may best be harnessed, interpreted, or characterized to
establish the facts required to prove Spalding's assertions to
the detriment of Hartsell. That is the role of Spalding's
counsel, not the board.
Spalding's statement of relevant facts is also not
sufficiently specific as to that which is necessary to establish
the Bergamini paper as a printed publication. To constitute a
printed publication under 35 U.S.C. § 102, a reference must at
least have been sufficiently accessible to that part of the
public which is concerned with the art of the reference to raise
a presumption that that audience would know of its content. In
re Bayer, 568 F.2d 1357, 1359, 196 USPQ 670, 674 (CCPA 1978).
See also In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070, 1071-72
(Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226, 210 USPQ 790,

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794 (CCPA 1981). In In re Hall, 781 F.2d 897, 899, 228 USPQ 453,
455 (Fed. Cir. 1986), the Court of Appeals for the Federal
Circuit stated (citing In re Bayer):
The proponent of the publication bar must show that
prior to the critical date the reference was
sufficiently accessible, at least to the public
interested in the art, so that such a one by examining
the reference could make the invention without further
research or experimentation.
Spalding's statement of material facts does not include
sufficient assertions on the level of dissemination and
accessibility to those in the public who may be interested in the
subject of the Bergamini paper. For instance, it does not state
the nature and business of the organization sponsoring each of
the two meetings identified in Numbered Paragraph 3; it does not
state the nature, purpose, or objective of any of the two
meetings identified in Numbered Paragraph 3; it does not state
who were invited to attend the two meetings identified in
Numbered Paragraph 3; it does not state how the general public or
professionals in the pertinent art were made to have advance
notice of the time and nature of the two meetings identified in
Numbered Paragraph 3; it does not state the paper distribution
policy or mechanism of any of the organizations identified in
Numbered Paragraph 3; it does not state the technical background
or professional interest of any individual named in Numbered
Paragraph 3 or of any participant who attended either one of the
two meetings identified in Numbered Paragraph 3; it does not

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state whether either meeting was open to any who desired to
attend. According to Numbered Paragraphs 3 and 4, 17 people were
sent or otherwise provided access to a copy of the Bergamini
paper, but that alone is incapable of establishing sufficient
accessibility to the Bergamini paper by those members of the
public who would be interested in its contents.
In essence, Spalding is asking us to simply presume (1) that
the public or at least those with an interest in the subject
matter of the Bergamini paper had fair advance notice that
something pertinent would be made available at the two meetings
identified in Number Paragraph 3, and/or (2) that any of the
organizations identified in Numbered Paragraph 3 had a paper
cataloguing, distribution, or dissemination mechanism, that the
Bergamini paper was accepted and processed by way of such a
cataloguing, distribution, or dissemination mechanism, and that
one with an interest in the subject of the Bergamini paper would
have known to contact the organizations identified in Numbered
Paragraph 3. We cannot presume any of the above. The
individuals who attended the meetings might not have had any
interest in the subject matter of the Bergamini paper, and the
subject matter of the paper might not have had anything to do
with the purpose or objective of the meetings identified in
Spalding's Numbered Paragraph 3. Those with an interest in the
subject of the Bergamini paper might not have been given notice

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of the meetings or given permission to attend. Also, the
organizations sponsoring the meetings might not have had any
paper cataloguing, distribution and dissemination policy or
mechanism and might not have selected or processed the Bergamini
paper for publication.
While no particular factor is always conclusive or even
required for demonstrating that a reference constitutes a printed
publication and each case must be decided on the basis of its own
facts, see, e.g., In re Wyer, 210 USPQ 790, 795 (CCPA 1981), the
wholesale lack of assertion by party Spalding of a plethora of
pertinent subsidiary facts as discussed above renders Spalding's
preliminary motion short of making out a prima facie basis for
relief.
Part C1(b)(1) of the LeVeen v. Edwards, 57 USPQ2d at 1412,
is reproduced below:
b.
Edwards also failed, in several
respects, to follow the procedure set out in
¶ 26 of the NOTICE DECLARING INTERFERENCE.
(1)
Edwards did not set out the facts in the
preliminary motion which would support the
relief requested in its preliminary motion 1.
Nine facts--identified as (1) through (9)--
are set out in the statement of material
facts. At best the facts establish that
Edwards '597 and Edwards '267 are prior art
under 35 U.S.C. § 102(e). Establishing that
two "references" are prior art does not make
out a case of anticipation or obviousness.

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Edwards' effort totally sandbagged its
opponent. An opponent is to admit or deny
each fact set out in a motion so that the
board may determine where there are disputed
factual issues. See Paper 1, page 23, part
(b)(2). LeVeen easily could have admitted
the nine facts set out by Edwards and would
not have conceded the preliminary motion.
There is no place in interference practice
for a party to require an opponent to
(1) search the motion and evidence, (2) set
out in an opposition the facts the opponent
may believe that the party must prove to make
out its case and (3) admit or deny those
facts.
Like party LeVeen in LeVeen v. Edwards, Hartsell here easily
can admit each of the twelve numbered facts contained in
Spalding's preliminary motion 2 and the motion would still be
deficient. There still will not be not enough facts for
establishing the Bergamini paper as a printed publication. We
reiterate here for emphasis what the board stated in the
precedential decision of LeVeen v. Edwards:
There is no place in interference practice for a party
to require an opponent to (1) search the motion and
evidence, (2) set out in an opposition the facts the
opponent may believe that the party must prove to make
out its case and (3) admit or deny those facts.
Similarly, there is no place in interference practice for a
moving party to shift the burden to the opponent of the motion to
allege and prove facts which are necessary to establish the
opposite of what the moving party needs to show entitlement for
relief. The burden of proof always lies with the moving party
seeking relief.

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Spalding failed to sufficiently allege facts necessary for
establishing entitlement to relief and also failed to articulate
a sufficiently specific rationale based on such alleged facts.
Like party Edwards did in LeVeen v. Edwards, party Spalding
sandbagged its opponent.
For reasons discussed above, because Spalding has not made
out a prima facie case that the Bergamini paper constitutes a
"printed publication" within the meaning of 35 U.S.C. § 102, we
need not reach the issue of whether the substance of the
Bergamini paper anticipates Hartsell's claim 22 corresponding to
Count 1 and Hartsell's claims 28 and 29 corresponding to Count 2.
Also because Spalding's preliminary motion 2 does not make
out a prima facie case that Spalding is entitled to the relief
requested, we need not consider Hartsell's opposition to
Spalding's preliminary motion 2 or Spalding's reply to Hartsell's
opposition to Spalding's preliminary motion 2.
Although Spalding's preliminary motion 2 has not explained
why the prior art it has asserted against Hartsell is not
applicable against Spalding, we will not hold Spalding's claims
corresponding to the counts as unpatentable over the same prior
art. If the Bergamini paper has not been regarded as a printed
publication against Hartsell, it also should not be regarded as a
printed publication against Spalding.

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It should be noted, however, that in the context of that
part of 37 CFR § 1.637(a) reproduced below, unless an explanation
is provided by the moving party to the contrary, it would be
presumed that the prior art asserted against the opponent's claim
or claims also renders anticipated or obvious the moving party's
own claim or claims corresponding to the same count:
If a party files a motion for judgment under § 1.633(a)
against an opponent based on the ground of
unpatentability over prior art, and the dates of the
cited prior art are such that the prior art appears to
be applicable to the party, it will be presumed,
without regard to the dates alleged in the preliminary
statement of the party, that the cited prior art is
applicable to the party unless there is included with
the motion an explanation, and evidence if appropriate,
as to why the prior art does not apply to the party.
(Emphasis added.)
The words "applicability" and "apply" refer not just to the date
of the reference but also the technical merit of the reference
against the moving party's own claims.
Spalding's preliminary motion 2 is denied.
Jameson Lee )
Administrative Patent Judge )
) BOARD OF PATENT
Richard Torczon ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Sally Gardner-Lane )
Administrative Patent Judge )

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By Federal Express:
Counsel for junior party:
Steven Z. Szczepanski, Esq.
Jenkins & Gilchrist
Counsel for senior party:
Steven N. Terranova, Esq.
Withrow & Terranova