Noelle v. Armitage

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 89
Filed by: Interference Trial Section Merits Panel
Box Interference Filed
Washington, D.C. 20231 15 May 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
RANDOLPH NOELLE
Junior Party,
(Application 08/742,480),
v.
RICHARD J. ARMITAGE,
WILLIAM C. FANSLOW, and MELANIE K. SPRIGGS
Senior Party,
(Application 09/322,021).
_______________
Patent Interference No. 104,724
_______________
Before: TORCZON, LANE, and NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
ORDER ENTERING FINAL JUDGMENT AGAINST NOELLE
The question before the merits panel is, must this
interference proceed to a determination of priority after it has
been determined that the junior party applicant is not entitled
to any claims, now or in the future, to subject matter within the
scope of the count in the interference? Given the procedural
posture and the particular facts of this case, we answer the
question in the negative.

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Part A. Background
The following findings are supported by the preponderance of
evidence in the record.
1. During Time Period 1 of this interference, Armitage
filed Preliminary Motion 1 under 37 CFR § 1.633(a) for judgment,
moving inter alia that all of Noelle's claims corresponding to
the count lacked an enabling disclosure under 35 U.S.C. § 112,
first paragraph. (Paper 25.)
2. Noelle opposed this motion on the merits. (Paper 37.)
3. During Time Period 2 of this interference, Noelle did
not file any contingent motion under 37 CFR § 1.633(i) to
redefine the interfering subject matter, e.g., by submitting
amended claims that would avoid any of the rejections proposed by
Armitage's Preliminary Motion 1.
4. On October 28, 2002, a paper styled "JUDGMENT (PURSUANT
TO 37 CFR § 1.640)" was mailed in this proceeding. (Paper 63,
"Judgment.")
5. In the Judgment, Armitage's preliminary motion 1 was
granted in part, in that Noelle's claims 42, 43, 46–48, 50, 54,
and 57, all the claims designated as corresponding to the count
in this interference, were held unpatentable for lack of an
enabling disclosure regarding chimeric monoclonal antibodies to
the antigen CD40CR. The remainder of Armitage's preliminary

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motion 1 was dismissed, as were Armitage's preliminary motions 2
and 3, and Noelle's miscellaneous motion 1. (Paper 63 at 19.)
6. The Judgment contained the further order that Noelle is
not entitled to a patent containing claims 42, 43, 46–48, 50, 54,
and 57, and that the Judgment be entered into the file of
Noelle's involved application. (Paper 63 at 19–20.)
7. On November 18, 2002, Noelle filed a timely request for
reconsideration. (Paper 65.)
8. Noelle argued in its Request for Reconsideration that
the Board had erred in its holding of nonenablement. (Id.)
a. Noelle did not contest the finality of judgment,
nor did it request a schedule to put on a priority case.
9. A paper denying Noelle's request was mailed on
February 21, 2003. (Paper 74, hereafter, "Decision on
Reconsideration.")
10. On March 26, 2003, Noelle filed a paper directed to
interference 104,724 styled "Request to Set Testimony Period for
Priority Phase" (hereafter, "Request for Testimony," Paper 75).
a. Prior to filing its Request for Testimony, Noelle
did not request or initiate a conference call requesting
authorization to file a motion.
b. Noelle's Request for Testimony was filed more than
five months after Judgment was issued in this case, and more than

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Noelle v. Armitage
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five weeks after the decision on reconsideration was issued in
this case.
11. On March 31, 2003, Armitage filed an Opposition to
Noelle's Request for Testimony. (Paper 76.)
12. On April 2, 2003, a paper styled "ORDER TO SHOW CAUSE
WHY NOELLE'S REQUEST TO SET TESTIMONY PERIOD FOR PRIORITY PHASE
WAS NOT TIMELY FILED" was mailed. (Paper 78.)
13. On April 10, 2003, Noelle responded to the Order to
Show Cause, urging that it had not recognized either the Judgment
or the Decision on Reconsideration as a "Final Decision" in this
proceeding, and that it was entitled to a priority phase to
resolve the patentability of Armitage's involved claims under 35
U.S.C. § 102(g). (Paper 79 at 8.)
14. On April 16, 2003, a paper styled "ORDER FOR TELEPHONE
CONFERENCE TO SET TIMES FOR PRIORITY PHASE" was mailed.
(Paper 81.)
a. The Order provided Armitage with an opportunity to
file further objections prior to the conference call. (Paper 81
at 7–8.)
15. Armitage filed further objections on April 18, 2003.
(Paper 83.)
16. A telephone conference call was held on April 23, 2003,
to discuss issues relating to whether a priority phase should be
established in this interference. A date was set for junior

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party Noelle to file its case-in-chief on priority, and the
parties were advised that a determination whether to proceed or
whether to terminate this interference would be mailed shortly.
Noelle's arguments
Noelle's fundamental argument in favor of setting a schedule
for a priority phase in this interference is that 35 U.S.C.
§ 135(a) mandates that the Board decide the issue of priority in
this interference. (Paper 79 at 11.) According to Noelle, the
declaration of the interference, the accorded benefit of its
priority date of February 14, 1992, and its preliminary
statement, alleging an actual reduction to practice prior to
Armitage's benefit date, fairly raise the issue of priority.
Noelle maintains that the statute and controlling precedent
"require administrative resolution of the issue [of priority]."
(Paper 79 at 1.) Noelle argues further, in effect, that it was
not given adequate notice that the "Judgment" (Paper 63) or the
"Reconsideration" (Paper 74) were Final Judgments terminating the
interference. (Paper 79 at 7–10.)
Armitage's arguments
Armitage responds that: the Judgment and the Reconsideration
were, by style and content, final judgments, and that Noelle
lacks standing to contest priority vis-à-vis Armitage (Paper 83
at 7–10); the issue of priority has not been fully developed or
fully raised (id. at 10–11); that public interest is consistent

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with the prompt issuance of a patent to Armitage (id. at 11–13);
and Noelle's preliminary statement is defective, so Noelle is not
permitted to take testimony on the issue of priority of invention
(id. at 13–16).
Part B. Discussion
The particular facts of this case, in the context of current
procedures in interferences before the Board of Patent Appeals
and Interferences, present a situation for which precedent
provides no clear answers. All of Noelle's involved claims
(i.e., those claims that have been designated as corresponding to
the count) have been held unpatentable under 35 U.S.C. § 112,
first paragraph, for lack of enablement. Judgment was entered
against Noelle (Paper 63), which, on reconsideration requested by
Noelle (Paper 65), was maintained. (Paper 74.)
Noelle contends that the Board is compelled by 35 U.S.C.
§ 135(a) and Federal Circuit precedent to determine the question
of priority in this case. Armitage, in contrast, contends that
having determined that all of Noelle's involved claims are
unpatentable for lack of an enabling disclosure, the Board
correctly entered judgment against Noelle. Moreover, Armitage
urges that the Board should follow the logical extension of its
precedent regarding threshold issues, and halt the proceedings.
For the reasons set out post, on the facts of this case, we agree

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with the outcome urged by Armitage, but we do not subscribe to
its rationale.
We emphasize that we do not regard this case as a vehicle to
pronounce broad interpretations of the law or our procedures. We
have found it useful, however, to review the cases to emphasize
that they are not 'on all fours' with this case, and that it is
not clear that their holdings apply, nor that their holdings
should be applied, to the facts of this case.
Threshold issues
We begin by observing that the term "threshold issue" is
best limited to questions involving whether there is an
interference to be resolved. Such questions include whether the
claims of the parties are drawn to common inventions, i.e.,
whether or not an interference-in-fact exists, Case v. CPC Int'l,
Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984)
("[n]o interference in fact means that there is no interfering
subject matter, that Case's patent is no impediment to granting
CPC the claims of its application"), or whether an applicant's
claim was timely filed under 35 U.S.C. § 135(b). Berman v.
Housey, 291 F.3d 1345, 1351, 63 USPQ2d 1023, 1027 (Fed. Cir.
2002) (§ 135(b) is "intended to be a statute of repose, limiting
the time during which an interference may be declared 'so that
the patentee may be more secure in his property right.'")
(Citation omitted.) The court distinguished Housey’s motion

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under § 135(b) as involving a threshold issue, while “Berman’s
motions [for unpatentability of Housey's claims over the prior
art], on the other hand, involved a 'mere' patentability issue."
Id. at 1352, 63 USPQ2d at 1028. Armitage's motion, as discussed
post, has more the character of a "mere" patentability motion,
albeit one that we considered first. 37 CFR § 1.640(b),
expressly approved by Berman. Id.
The Board's authority under §§ 6 and 135(a) as amended in
1984
The formation of the Board of Patent Appeals and
Interferences removed a major jurisdictional roadblock from
interference practice. Prior to the revisions to 35 U.S.C. §§ 6
and 135(a), enacted in 1984, issues of patentability were raised
before and decided by a primary examiner. 37 CFR §§ 1.231, 1.237
(1984). If the examiner determined that no involved claims were
patentable, the interference was "dissolved," and prosecution of
the application might continue. If interfering claims remained,
the examiner would return the case to the Board of Interferences.
Under the 1984 statute, issues of patentability and priority
could be resolved in a single proceeding before the Board rather
than in a series of complicated inter partes and ex partes
proceedings.
The Federal Circuit analyzed the import of 35 U.S.C. §§ 6
and 135(a) as follows:

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the legislative history of §§ 6 and 135(a) makes clear
that these provisions address only what issues the
Board is empowered to consider, and thus does not
establish any affirmative obligations that it must
perform. The legislative history of the Patent Law
Amendments of 1984, Pub. L. No. 98-622, 98 Stat. 3383
. . . states that §§ 6 and 135(a) were amended in 1984
'to permit the Board of Patent Appeals and
Interferences to consider all patentability issues on
[sic] interferences.' 130 Cong. Rec. H10525, H10528
(1984), reprinted in 1984 U.S.C.C.A.N. 5827, 5836
(emphasis added). The use of the word 'permit,' as
opposed to terms such as 'compel,' 'require,' or the
like, strongly suggests that Congress was not placing
any affirmative obligations on the Board, but rather
setting forth the scope of its authority in
interferences. Section 6 therefore does not require
the result sought by Berman.
Berman, 291 F.3d at 1353–54, 63 USPQ2d at 1029. While the court
was addressing principally Berman's contention that § 6 requires
the Board to determine all questions of priority and
patentability, the court's remarks confirm that Congress accorded
the Board significant discretion in its consideration of issues
within its newly expanded jurisdiction under § 135(a).
Pursuant to the 1984 act, the PTO implemented regulations
that permitted involved parties, inter alia, to raise issues of
no interference-in-fact and patentability before the Board. See
49 Fed. Reg. 48416, 48461 (1984); 37 CFR § 1.633(a), (b) (1985)
("Preliminary Motions"). It came to be the practice, codified in
1995, that most decisions on preliminary motions were deferred to
final hearing. 60 Fed. Reg. 14488, 14525 (1995); 37 CFR
§ 1.640(b) (1995) ("[u]nless an administrative patent judge or

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the Board is of the opinion that an earlier decision on a
preliminary motion would materially advance the resolution of the
interference, decision on a preliminary motion shall be deferred
to final hearing."). The PTO explained that this procedure would
advance resolution of interferences where settlement was not
likely, while parties could still inform the administrative
patent judge that a decision on a particular motion would assist
the settlement process in a given case. Id. at 14509. Under
these procedures, the parties would conduct and present their
priority cases prior to decisions on the patentability of
involved claims, and, indeed, often prior to final decisions on
the definition of the count and the identity of the corresponding
claims.
It was in this procedural context that the Federal Circuit
analyzed the Board's discretion to consider issues of priority
and patentability in interferences, reasoning that deciding all
the issues "fully and fairly raised during the interference
proceeding whether related to patentability or priority, is in
full accord with congressional intent that PTO procedures be
simplified as well as improved." Perkins v. Kwon, 886 F.2d 325,
328, 12 USPQ2d 1308, 1310 (Fed. Cir. 1989); see also Rexam Indus.
Corp. v. Eastman Kodak Co., 182 F.3d 1366, 1369, 51 USPQ2d 1457,
1459 (Fed. Cir. 1999) ("We have consistently applied the
rationale of Perkins to conclude that priority issues that have

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been fully developed and presented to the Board for decision in
interference proceedings should be decided by the Board even if a
count is deemed unpatentable to one party.") (citations omitted,
underscore added.)
Berman clarified the holding of Perkins and other cases
often cited as requiring that the Board reach a given issue in an
interference, stating:
Those cases . . . do not hold that all issues relating
to patentability that are fairly raised in an
interference must be addressed by the Board. Rather,
those cases stand for the proposition that if, in a
properly declared interference, an issue of priority or
patentability is fairly raised and fully developed on
the record, then the Board has the authority to
consider that issue even after the Board determines
that one party was not entitled to its claims.
Berman, 291 F.3d at 1352, 63 USPQ2d at 1028 (emphasis original).
Regarding Perkins, the court explained that
Perkins therefore held only that the Board had the
authority to decide the priority issue even after it
determined that Kwon's interfering claims were
unpatentable, and thus was not presented with the
question whether the Board is compelled to address all
fairly raised issue of priority and patentability in
every instance. [Id.]
Thus, Perkins authorizes but does not compel the Board to address
priority, even if patentability is dispositive, and vice-versa.
Current procedures
In the current practice of the Board in interferences, which
was followed in this case, preliminary motions are decided before
setting the schedule for taking testimony and briefing for the

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parties' priority cases. The earlier practice had the effect of
leaving so many issues underlying the priority case unresolved
that the parties had to present multiple priority cases in the
alternative, accounting for many contingencies. In too many
cases, that practice resulted in unnecessarily increased costs to
the parties and lengthened proceedings, exactly the opposite of
the goals of the legislative reform of 1984. The current
practice does increase costs early in the proceeding because
preliminary matters are usually fully developed and resolved
before proceeding to priority. However, the resulting greater
clarity of the issues in the priority phase usually reduces the
overall cost and duration of the interference. A by-product of
the current process is that a dispositive patentability issue is
often reached before priority has been developed beyond a
rudimentary pleading (that is, the filing of the preliminary
statement alleging a date of earliest proof of invention). The
parties have not yet expended time and resources preparing and
briefing their cases on priority. In this posture, the question
is not whether to decide an already-briefed issue, but whether
there is sufficient justification to subject the party with
patentable claims to the expenses of time and resources required
for a priority case.
We begin with a consideration of the effect of having no
patentable claims at this juncture. Other considerations include

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the status and relative positions of the parties, whether the
interference was provoked, and if so, in what way, and the
actions of the parties in the interference, and to what extent
they were constrained by the proceedings in the particular case.
Prior to the declaration of an interference, the absence of
patentable claims corresponding to the count bars the declaration
of an interference. 37 CFR § 1.603 ("Before an interference is
declared between two or more applications, the examiner must be
of the opinion that there is interfering subject matter claimed
in the applications which is patentable to each applicant subject
to a judgment in the interference."). This practice is
essentially unchanged from the practice cited with approval by
the Supreme Court:
there is no basis for the proposition that even where
an applicant for an interference presents a claim which
on its face is unpatentable, a complicated and
frequently lengthy factual inquiry into priority of
invention must inexorably take place. On the contrary,
Rule 201(a), 37 CFR § 1.201(a), defines an interference
proceeding as one involving "two or more parties
claiming substantially the same patentable invention
and may be instituted as soon as it is determined that
common patentable subject matter is claimed * * *."
(Emphasis supplied.) See Application of Rogoff, 46
CCPA 733, 739, 261 F.2d 601, 606, 120 USPQ 185, 188:
"The question as to patentability of claims to an
applicant must be determined before any question of
interference arises and claims otherwise unpatentable
to an applicant cannot be allowed merely in order to
set up an interference."
Brenner v. Manson, 383 U.S. 519, 528 n.12, 148 USPQ 689, 693 n.12
(1966).

Interference No. 104,724 Paper No. 89
Noelle v. Armitage
1 37 CFR § 1.633(i) reads in relevant part:
When a motion is filed under paragraph (a), (b), or (g) of this
section, an opponent, in addition to opposing the motion, may file a
motion to redefine the interfering subject matter under paragraph
(c) of this section
- 14 -
After an interference has been declared, a party may move
for judgment that an opponent's claims are unpatentable on issues
other than derivation or priority:
[a] motion for judgment against an opponent's claim
designated to correspond to a count on the ground that
the claim is not patentable to the opponent . . .
37 CFR § 1.633(a). This rule effectively provides a party with
the opportunity to request consideration of patentability issues
that, had they been raised during ex parte prosecution, would
have barred declaration of an interference involving its
opponent's claims prior to a positive determination of
patentability. In addition to providing the opportunity to
oppose the motion for unpatentability on the merits, the rules
provide a party the opportunity to redefine the count by, e.g.,
amending its claims, in response to a motion under 37 CFR
§ 1.633(a), (b), or (g). See 37 CFR § 1.633(i)1. This rule
provides a party with the opportunity to preserve patentable
claims to subject matter corresponding to the count, even if the
claims present at the declaration of the interference are
determined to be unpatentable.

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The scope of a judgment in an interference, and the
resulting estoppel, require a party to act to preserve its right
to make claims to subject matter related to the count. See
37 CFR § 1.658(c), which reads in relevant part:
A judgment in an interference settles all issues which
(1) were raised and decided in the interference, (2)
could have been properly raised and decided in the
interference by a motion under Section 1.633 (a)
through (d) and (f) through (j) or Section 1.634, and
(3) could have been properly raised and decided in an
additional interference with a motion under Section
1.633(e). A losing party who could have properly
moved, but failed to move, under Section 1.633 or
1.634, shall be estopped to take ex parte or inter
partes action in the Patent and Trademark Office after
the interference which is inconsistent with that
party's failure to properly move . . . .
Under this provision, a party cannot present, in a subsequent ex
parte proceeding, an amended claim that avoids the enablement
problem, thereby provoking another interference. The rule
accomplishes this by requiring the party to amend its claims to
eliminate allegedly unenabled subject matter when the issue is
raised. The opportunity to amend claims under 37 CFR § 1.633(i)
is limited in duration, and the consequences of failing to do so,
and losing the interference, are permanent.
In light of the opportunity to amend claims in response to
unpatentability motions, the failure to preserve any claims
corresponding to the count in the decision on preliminary motions
takes on greater significance, especially before any inter partes
actions other than a pleading have been taken to establish

Interference No. 104,724 Paper No. 89
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priority. The cases, as explained supra, confirm that the Board
has the authority, but is not compelled, to consider issues of
priority or patentability after a dispositive decision has been
made or a dispositive action taken. When confronted with a
situation at the close of decisions on preliminary motions in
which one party has no patentable claims that correspond to the
count, at least the following three factors appear to provide
guidance on answering the question of whether or not to continue.
No one factor is necessarily dispositive in any given case.
Which party has been accorded for priority the benefit of the
earliest application? What efforts has the party without
patentable claims made to preserve patentable claims
corresponding to the count? How strong is the evidence that that
party has presented supporting its case of prior invention of an
embodiment within the scope of the count?
The present interference
In the present case, Noelle, the junior party, and Armitage,
the senior party, are both applicants. Armitage, as the senior
party, is presumed to have been the first to invent. 37 CFR
§ 1.657(a). Noelle, as junior party, bears the burden of proving
that it was first to invent by a preponderance of the evidence.
37 CFR § 1.657(b), cited as authority in Brown v. Barbacid, 276
F.3d 1327, 1333, 61 USPQ2d 1236, 1239 (Fed. Cir. 2002) ("under 37

Interference No. 104,724 Paper No. 89
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CFR § 1.657(a) and (b), the ultimate burden of proof always
remained on the junior party").
In this case, neither party has copied the claims of the
other. This circumstance, in our practice, largely removes the
decision for lack of enablement as an equivalent to a "threshold"
issue, contrary to dicta by the Administrative Patent Judge in
the Order for the telephone conference described supra.
(Paper 81 at 6.) When one party has the opportunity to copy
another's claims in order to provoke an interference, an early
determination that there is an inadequate basis in the provoking
party's specification for the interfering claims vitiates the
provoking party's standing to prosecute the interference. This
early look removes the incentive to provoke an interference
spuriously. That is not the case here.
Regarding the second factor, we have found that Noelle made
no attempt during Time Period 2 of this interference, pursuant to
§ 1.633(i), to add claims that were supported by its application
and that interfered with Armitage's claims; nor did Noelle seek
to redefine the count. Armitage raised multiple grounds of
unpatentability, and Noelle cannot be faulted for not responding
to each one with a contingent motion to amend. However, Noelle
chose to seek only broad claims and therefore accepted the
correspondingly broad risk that those claims would be found
unpatentable. In the conference call, Noelle noted that there

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had been no challenge to the enablement of its core invention,
and urged that that fact gave strength to its argument that its
priority challenge under § 102(g) should go forward. The short
answer is that, as long as one patentable interfering claim
remained, further issues, including priority, would have been
addressed. The absence of efforts to present patentable claims
of more limited scope weighs against Noelle.
As for the third factor, at this stage of the proceedings,
Noelle has only alleged that it was the prior inventor. Noelle's
proffer, in its preliminary statement, consists of two sheets
said to be copies of pages from a research notebook. The sheets
are neither signed nor witnessed. Nothing on those two pages
identifies, by itself, the experiment, the materials, or the
results in such a way that, without much more, one could have any
basis to say that it shows that the inventor had made an
embodiment within the scope of the count. If Noelle retained any
patentable claims corresponding to the count, this "notice
pleading" would suffice, either to proceed to priority normally,
or to provoke an Order to Show Cause why judgment should not be
entered against Noelle. Noelle's insistence that the public
might be harmed by the issuance of a patent to one who was not
first to invent (Paper 79 at 13) must be weighed against the
unlikelihood, on the present record, that Noelle will prevail,
and that the public will gain the benefit of its disclosure.

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While not dispositive, we find the scant and debatable evidence
supporting Noelle's prior invention developed thus far weighs
against a holding that priority has been fully and fairly raised.
Finally, we note Armitage's argument that Noelle has failed
to comply with the Standing Order, § 32, which requires a
conference call prior to filing a Rule 635 miscellaneous motion.
We shall not dismiss Noelle's motion for failure to comply with
this order, given its stated understanding that the proceedings
were not complete. However, the Board has found conference calls
to be extremely useful in the scheduling of actions when the
course to be followed is not clear, and particularly when, as
here, both parties are represented by experienced and well-
prepared counsel. Accordingly, we remind Noelle that conference
calls before any action not scheduled are the norm in current
interference proceedings before the Board.
In summary, the cumulative weight of the factors in this
proceeding favor terminating the interference at this juncture.
We emphasize that we do not mean to imply any general rule of
decision; each case must be decided on its particular facts.
ORDER
In consideration of the foregoing facts and discussion, it
is:
ORDERED that Final Judgment is entered against Noelle;

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Noelle v. Armitage
- 20 -
FURTHER ORDERED that Noelle's authorization to file its
principal brief on priority on June 18, 2003, is rescinded;
FURTHER ORDERED that judgment on priority as to Count 1, the
only count in this interference, is awarded against junior party
RANDOLPH NOELLE;
FURTHER ORDERED that Noelle is not entitled to a patent
containing claims 42, 43, 46–48, 50, 54, and 57;
FURTHER ORDERED that if there is a settlement agreement,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661;
and
FURTHER ORDERED that a copy of this decision be given a
paper number and be entered in the administrative records of
Noelle’ application 08/742,480 and of Armitage’s application
09/322,021.
RICHARD TORCZON )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS AND
SALLY GARDNER LANE ) INTERFERENCES
Administrative Patent Judge )
) INTERFERENCE
MARK NAGUMO ) TRIAL SECTION
Administrative Patent Judge )

cc (via first class mail):
Counsel for Noelle
(real parties-in-interest:
The Trustees of Dartmouth College and
IDEC Corp. (licensee)):
E. Anthony Figg
Robin L. Teskin (Pillsbury Winthrop)
ROTHWELL FIGG ERNST & MANBECK, PC
Counsel for Armitage
(real party-in-interest:
Immunex Corp., a wholly owned subsidiary of Amgen):
Gordon Kit
Janis C. Henry (Immunex Corp.)
Sughrue, Mion, Zinn, MacPeak & Seas, PLLC

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 92
Filed by: Interference Trial Section Merits Panel
Mail Stop Interference Filed
P.O. Box 1450 3 July 2003
Alexandria, VA 22313-1450
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
RANDOLPH NOELLE
Junior Party,
(Application 08/742,480),
v.
RICHARD J. ARMITAGE,
WILLIAM C. FANSLOW, and MELANIE K. SPRIGGS
Senior Party,
(Application 09/322,021).
_______________
Patent Interference No. 104,724
_______________
Before: TORCZON, LANE, and NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON NOELLE REQUEST FOR RECONSIDERATION
I.
Noelle has requested reconsideration of our decision
(Paper 89) granting Armitage's Preliminary Motion 1, in part, and
issuing final judgment. Noelle argues that the decision:
1. Ruled for the first time that the Board had discretion
to decline to order a priority phase. (Paper 91 at 2
and 8.)

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
- 2 -
2. Established a three-part test to decide whether or not
to exercise that discretion. (Paper 91 at 2.)
3. Erred in deciding, under part two of the test, that
Noelle had not made an effort to preserve a claim to
patentable subject matter. More specifically, Noelle
urges that the Board overlooked Noelle's claim 45,
designated as not corresponding to the count, which in
fact corresponds to the count. (Paper 91 at 9–10.)
4. Erred in concluding, under part 3 of the test, that
Noelle was unlikely to succeed in proving priority of
invention based on its preliminary statement.
(Paper 91 at 11–12.)
We have reconsidered our decision, but will not grant
relief.
II.
A.
Our earlier decision considered the proper course of action
in this case when it had been determined that the junior party,
Noelle, was not entitled to a patent containing any claim
designated as corresponding to the count, and that there had been
no more than a mere pleading regarding priority in the
interference. In this case, in contrast to many cases in the
past, at the time of the decision on the preliminary motions,
there had been no substantive testimony, cross examination,

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
- 3 -
evidence, or argument regarding priority. We expressly declined
to use this case as a vehicle to pronounce broad interpretations
of the law or of our procedures. (Paper 89 at 7, first full
paragraph.) The decision to proceed necessarily depends on the
facts in each case regarding the status and relative positions of
the parties, and their actions, including whether the
interference was provoked (not a factor on the facts before us),
and the extent to which the parties may have been constrained
from taking certain actions by the proceedings. (Paper 89 at
13.)
In this particular case, we found three relevant factors.
First, both parties are applicants, and neither copied the claims
of the other. The senior party is presumed to have been the
first to invent 37 CFR § 1.657(a); Noelle, as the junior party,
bears the burden of proving it was the first to invent.
(Paper 89 at 16–17.) Second, Noelle made no efforts, beyond
opposing Armitage's preliminary motion on the merits, to preserve
or present patentable claims corresponding to the count. For
example, Noelle did not seek to add, under 37 CFR § 1.633(i),
claims that were supported by its application and that interfered
with Armitage's claims. (Paper 89 at 17.) Nor did Noelle seek
to redefine the interfering subject matter by designating an
application claim to correspond to the count, under 37 CFR §
1.633(c). (Paper 89 at 17.) Third, we found that Noelle's

Interference No. 104,724 Paper No. 92
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- 4 -
preliminary statement, while sufficient for "notice pleading,"
offered too scant and debatable a basis to decide that refraining
from deciding priority would result in the issuance of a facially
invalid patent.
B.
Noelle does not renew its argument that the Board acted
contrary to statute and judicial precedent when it determined not
to order a priority phase. (Paper 91 at 8–9.) Nor does Noelle
argue that the "test" fails to perform its intended function.
Rather, Noelle argues only that the Board erred in its evaluation
of the second and third factors of its "test." (Paper 91 at
9–12.)
Regarding the second factor, that Noelle made no efforts to
preserve or present a patentable claim in response to Armitage's
motion for unpatentability, Noelle urges that we overlooked the
presence of its claim 45. Noelle argues that claim 45 in fact
corresponds to the count, in that it is a species within the
scope of Noelle's claim 42, which defines, in part, the count.
(Paper 91 at 9–10.) Noelle argues further that Armitage's
failure to move to designate claim 45 as corresponding to the
count is a concession of the patentability of the subject matter
of claim 45, and a concession that Noelle has priority to that
invention. (Paper 91 at 10.) Noelle asserts that it has
"consistently and diligently pursued claims directed to subject

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
1 In its summary, Noelle also argues that, while it could have moved to
designate claim 45 as corresponding to the count, "the principal onus and
motivation for doing so was on Armitage, not Noelle." (Paper 91 at 2.) Noelle
argues further that requiring Noelle to bring claim 45 into the interference
would require that Noelle be prescient that the Board would grant Armitage's
Preliminary Motion 1 for lack of enablement; that the Board would not order a
case on priority; and that Noelle's failure to bring the claim in would be
adopted as a factor in its decision not to order a priority case. (Paper 91
at 2–3.)
- 5 -
matter which corresponds to the count," and that it should be
entitled to prove a date of invention for the subject matter of
claim 45. (Id.) Noelle concludes that factor 2 weighs in its
favor for presenting a case for priority.1 (Id.)
Regarding the third factor, Noelle urges that the Board
improperly treated its preliminary statement as evidence, rather
than as a pleading. (Paper 91 at 11.) Moreover, Noelle urges
that, having denied Noelle the opportunity to present evidence
explaining its showing, the Board was not in a position to
appreciate the import of the page of Noelle's research records
submitted with its preliminary statement. (Paper 91 at 11–12.)
Noelle concludes that the Board misused its preliminary
statement, which exists for procedural, rather than evidentiary
purposes. (Paper 91 at 12.)
III.
A.
Noelle's argument regarding "the second factor" is not
persuasive. First, neither party raised the status of claim 45,
which was designated as not corresponding to the count in the

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
2 ("Any paper belatedly filed will not be considered except upon notion
[sic: motion] (§ 1.635) which shows good cause why the paper was not timely filed
. . . .")
- 6 -
declaration of this interference. (Paper 1 at 5.) We cannot
have misapprehended or overlooked a point that neither party
argued.
On the merits, it is insufficient to argue, as Noelle has
done, that the subject matter of claim 45 is fully encompassed by
the count, or, equivalently, that the genus covered by claim 42
includes the species covered by claim 45. Ultimately, a claim
corresponds to a count if the claimed subject matter is the same
patentable invention as subject matter claimed by the other party
that corresponds to the count. 37 CFR § 1.637(c)(3)(ii). It was
Noelle's burden, in a timely motion, to demonstrate that the
species covered by claim 45 was not patentable over one of
Armitage's claims that correspond to the count. Having failed to
make such a showing, Noelle's argument must fail.
Noelle's argument is also untimely. Noelle had two
opportunities to make its argument regarding claim 45: during
TIME PERIOD 1, or during TIME PERIOD 2. Its argument now is
belated and unexcused by any argument showing good cause why it
was not timely presented. Cf. 37 CFR § 1.645(b)2. Moreover, not
having raised the status of claim 45 in a preliminary motion,
Noelle would be barred from raising the issue at final hearing.

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
3 ("A party shall not be entitled to raise for consideration at final
hearing any matter which properly could have been raised by a motion under
§ 1.633 or 1.634 unless the matter was properly raised in a motion that was
timely filed by the party under § 1.633 or 1.634 and the motion was denied or
deferred to final hearing . . . .").
- 7 -
37 CFR § 1.655(b)3. Whether Noelle did not notice that claim 45,
in its opinion, should correspond to the count, or whether it
decided, for its own good reasons, not to contest its designation
as not corresponding to the count, it may not, at this late date,
relitigate the issue.
Noelle's effort to shift to Armitage the onus of moving to
designate claim 45 as corresponding to the count is without
merit. Armitage must henceforth labor under the consequences of
its 'failure' to move that Noelle's claim 45 be designated as
corresponding to the count. 37 CFR § 1.658(c). Armitage has
effectively conceded that it has no claim in this interference
that could bar a patent containing claim 45 to Noelle. These
considerations, however, do not excuse Noelle's 'failure' to
take an action it could have taken in this interference.
B.
Noelle's complaint that the Board considered, improperly and
inadequately, the merits of its preliminary statement, and used
it as an evidentiary, rather than as a purely procedural, matter
is also not persuasive. Noelle has misapprehended the point of
our discussion of the third factor, which was that if the record
thus far developed contained a compelling reason to doubt

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
- 8 -
Armitage's priority, we might have exercised our discretion
differently. Noelle is half right in stating that 37 C.F.R.
§ 1.629(e) bars the use of its preliminary statement as evidence.
Rule 629(e) bars the use of a preliminary statement as evidence
on behalf of the filer. Consequently, we cannot use Noelle's
pleading as evidence against Armitage. In sum, we lack a junior
party with interfering claims and evidence of record that
Armitage is not senior to Noelle. Finally, Noelle's reliance on
37 C.F.R. § 1.629(d) as a basis for error is curious because the
panel looked to Noelle's preliminary statement to see if the
attachments provided compelling evidence that Armitage was not
senior. To the extent we erred, it was in an effort to reach
priority as Noelle wishes. The lack of evidence was but one of
several factors in this case that, in total, weighed in favor of
awarding judgment against Noelle in this case.
IV
Noelle's request for reconsideration is denied.
SALLY GARDNER LANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
MARK NAGUMO ) INTERFERENCE
Administrative Patent Judge ) TRIAL SECTION

Interference No. 104,724 Paper No. 92
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- 9 -
TORCZON, Administrative Patent Judge, concurring.
While I agree with the principal opinion, I write separately
to address two confusing aspects of the request for
reconsideration.
Noelle explains that its request for reconsideration was
necessitated by the Board's "articulation of a new and different
rationale [than that propounded by Armitage] for reversing its
prior decision to allow a priority determination in this case."
(Paper 91 at 1.) The request, according to Noelle, is its first
opportunity to respond to the rational and its factual
underpinnings.
Noelle's argument that the Board overlooked claim 45 in
determining that Noelle had made no effort to preserve a claim to
patentable subject matter corresponding to the count is troubling
in two regards. First, it incorrectly states the basis for
correspondence. Second, it improperly attempts to shift the
burden (and the blame) to Armitage and the Board to have claim 45
designated as corresponding.
Correspondence is an accounting mechanism for determining
what claims would be lost to the party that loses the count. As
such, correspondence is a provisional rejection of designated
claims as anticipated by or obvious in view of a claim
indisputably corresponding to the count. Cf. In re Deckler, 977
F.2d 1449, 1451, 24 USPQ2d 1448, 1450 (Fed. Cir. 1992) (the

Interference No. 104,724 Paper No. 92
Noelle v. Armitage
- 10 -
losing party in an interference is not entitled to a patent
covering claims patentably indistinguishable from the lost
count); 37 C.F.R. § 1.637(c)(3). Noelle's statement that
claim 45 is within the scope of corresponding claim 42 is
meaningless in this context. It is well-settled that a claimed
species within a genus is patentably distinct from the genus
absent some basis for supposing otherwise. E.g., In re Baird,
16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re Jones,
958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). As the record
stands, no one has provided a reason to believe that claim 45
would be properly provisionally rejected over the subject matter
of claim 42 or any other claim corresponding to the count.
The burden shift is all the more troubling in light of the
nature of correspondence as a provisional rejection. Noelle
contends that it has reason to believe that claim 45 should
correspond—that is to say, should be provisionally rejected—along
with claim 42, but that it is under no obligation to assist the
Board in making that rejection. This contention is fundamentally
at odds with a system that relies on the candor of those seeking
patents.
RICHARD TORCZON )
Administrative Patent Judge )

cc (via first class mail and facsimile):
Counsel for Noelle
(real parties-in-interest:
The Trustees of Dartmouth College and
IDEC Corp. (licensee)):
E. Anthony Figg
Robin L. Teskin (Pillsbury Winthrop)
ROTHWELL FIGG ERNST & MANBECK, PC
Counsel for Armitage
(real party-in-interest:
Immunex Corp., a wholly owned subsidiary of Amgen):
Gordon Kit
Janis C. Henry (Immunex Corp.)
Sughrue, Mion, Zinn, MacPeak & Seas, PLLC