Waterman v. Birbaum

The opinion in support of the decision being
entered today is binding precedent of the Trial Section
Paper 4
Filed by: Trial Section Merits Panel
Box Interference Entered
Washington, D.C. 20231 22 February 2000
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
PAUL S. WATERMAN,
Junior Party,
(Application 09/049,225),
v.
JEAN-LUC BIRBAUM, JEAN RODY, MARIO SLONGO,
ANDREAS VALET and ROLAND A. E. WINTER
Senior Party
(Patent 5,736,597).
_______________
Patent Interference No. 104,500
_______________
Before: McKELVEY, Senior Administrative Patent Judge , and
SCHAFER, LEE and TORCZON, Administrative Patent Judges .
PER CURIAM.
ORDER TERMINATING INTERFERENCE
A. Background
The interference was declared 9 February 2000 and involves a
Waterman application and a Birbaum patent. Unknown to the board
at the time the interference was declared, was an express

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abandonment of the Waterman application which had been filed by
Waterman on 18 January 2000. By virtue of a JOINT COMMUNICATION
(Paper 3), the parties have notified the board of the abandoned
status of the Waterman application.
An interference may be declared between a pending
application and an unexpired patent when the Commissioner is of
the opinion that the application and patent claim the same
patentable invention. 35 U.S.C. § 135(a); 37 CFR § 1.606.
B. Discussion
The Patent Statute (35 U.S.C. § 135(a)) does not authorize
an interference between an abandoned application and an unexpired
patent.
Since the Waterman application was abandoned as of the date
the interference was declared, it follows that the board lacked
subject matter jurisdiction over the interference. Compare
Petrie v. Welsh , 21 USPQ2d 2012 (Bd. Pat. App. & Int. 1991)
(patent versus application interference terminated for lack of
subject matter jurisdiction where it was discovered patent had
expired prior to declaration of interference).
In light of the board's lack of subject matter jurisdiction
in this interference, and notwithstanding the ORDER entered 9
February 2000 (Paper 2), there will be no further evaluation of
the Rule 608(b) showing which has been presented by Waterman.

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The board appreciates the prompt manner in which counsel
have called our attention to the abandoned status of the Waterman
application.
C. Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that the interference is terminated for lack of
subject matter jurisdiction.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )
)
)
______________________________)
RICHARD TORCZON )
Administrative Patent Judge )

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cc (via First Class Mail):
Attorney for Waterman
(real party in interest American Cyanamid Corporation):
Thomas E. Freidel, Esq.
PENNIE & EDMONDS, LLP
1155 Avenue of the Americas
New York, NY 10036-2711
Tel: 212-790-9090
Fax: 212-869-9741
E-mail: None
Attorney for Birbaum
(real party in interest Ciba-Geigy Corporation):
JoAnn Villamizar, Esq.
CIBA SPECIALTY CHEMICALS CORPORATION
540 White Plains Rd.
P.O. Box 2005
Tarrytown, NY 10591
Luther A. R. Hall, Esq.
MATTHEWS, WOODBRIDGE & COLLINS, P.A.
100 Thanet Circle
Suite 306
Princeton, NJ 08540-3674
Tel: 609-924-3773
Fax: 609-924-3036
E-mail: None