Barton v. Adang
| Decision Date | 29 January 2004 |
| Docket Number | 781,Interference 103 |
| Parties | KENNETH A. BARTON and MICHAEL J. MILLER, (U.S. Application 07/827, 906) (Barton), v. MICHAEL J. ADANG, THOMAS A. ROCHELEAU, DONALD J. MERLO, and ELIZABETH E. MURRAY, (U.S. Patent 5, 380, 831) Senior Party (Adang) or DAVID A. FISCHHOFF and FREDERICK J. PERLAK, (U.S. Application 08/434, 105) Junior Party (Fischhoff), |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
Before: GRON, Administrative Patent Judge, SPIEGEL Administrative Patent Judge, and NAGUMO, Administrative Patent Judge
GRON ADMINISTRATIVE PATENT JUDGE.
We grant Fischhoff's uncontested Preliminary Motion 10 to amend Count 2 both with respect to Claims 41-43 of Fischhoff's involved U.S. Application 08/434, 105, filed May 3, 1995, and with respect to Claims 13-14 of Adang's U.S. Patent 5, 380, 831 (FX 11). Count 2 is ordered amended to exclude Claims 41-43 of Fischhoff's involved U.S. Application 08/434, 105 and Claims 13-14 of Adang's U.S. Patent 5, 380, 831 (FX 11). Claims 41-43 of Fischhoff's involved U.S. Application 08/434, 105 and Claims 13-14 of Adang's U.S. Patent 5, 380, 831 (FX 11) are designated as not corresponding to amended Count 2.
With respect to priority of the invention of amended Count 2, the preponderance of evidence of record establishes:
A. Senior Party Adang first reduced the invention of amended Count 2 to practice constructively on September 9, 1988, the filing date of Adang's grandparent U.S. Application 07/242, 482, now abandoned;
B. Junior Party Fischhoff actually reduced the invention of amended Count 2 to practice prior to September 9, 1988;
C. Junior Party Fischhoff conceived of an invention of amended Count 2 of this interference no later than December 12, 1986, the date the evidence shows that David Fischhoff signed and dated Monsanto Company laboratory notebook page No. 3547889, entitled "Expansion of A+T rich Genes in Plants," and page No. 3547890, entitled "A+T rich (p.2)," each page signed December 15, 1986, as read and understood by Dannette C. Ward, with page No. 3547889 and page No. 3547890 respectively having attached thereto pages one and two of a two-page printed statement of the invention of amended Count 2 signed by David Fischhoff and dated 12/12/86;
D. Senior Party Adang has not established that it diligently endeavored to reduce the invention of amended Count 2 to practice from a time just prior to December 12, 1986, until September 9, 1988, the filing date of Adang's U.S. Application 07/242, 482, now abandoned; and
E. Senior Party Adang has not established that it conceived of the invention of amended Count 2 of this interference before December 12, 1986.
Based on the above, we conclude that (1) Junior Party Fischhoff is entitled to priority of invention for amended Count 2 with respect to Senior Party Adang and Junior Party Barton; (2) Senior Party Adang is not entitled to a patent for Claims 1-12 of U.S. Patent 5, 380, 831, which issued January 10, 1995; and (3) Junior Party Barton is not entitled to a patent for Claims 1-4, 7, and 15-22 of U.S. Application 07/827, 906, filed January 30, 1992.
Furthermore, the findings and conclusions in Monsanto Co. v. Mycogen Plant Science, Inc., 261 F.3d 1356, 59 U.S.P.Q.2d 1930 (Fed. Cir. 2001): (1) relate to the patentability of Claims 7-9 and 12 of Monsanto's non-involved U.S. Patent 5, 500, 365 under 35 U.S.C. § 102(g) in light of Barton's evidence of prior invention thereof; (2) do not support a conclusion that the patentability of Claims 3, 5, and 39-40 of Fischhoff's presently involved U.S. Application 08/434, 105, filed May 3, 1995, which stand designated as corresponding to amended Count 2 of this interference, should be rejected under 35 U.S.C. § 102(g); and (3) do not support a haphazard request for Barton to disclose all information detrimental to the patentability of Fischhoff's claims under 35 U.S.C. § 102(g).
September 26, 1983 - Michael J. Adang and John D. Kemp filed U.S. Application 06/535, 354, entitled "Insect Resistant Plants" (assignment to Agrigenetics Research Associates Ltd. recorded September 20, 1983; assignment to Lubrizol Genetics Inc. recorded May 29, 1986), now abandoned.
April 4, 1986 - Michael J. Adang and John D. Kemp filed U.S. Application 06/848, 733, entitled "Insect Resistant Plants" (assignment to Lubrizol Genetics Inc. recorded June 25, 1986), now abandoned, as a continuation-in-part of U.S. Application 06/535, 354, filed September 26, 1983.
September 9, 1988 - Michael J. Adang, Thomas A. Rocheleau, Donald J. Merlo, and Elizabeth E. Murray filed U.S. Application 07/242, 482, entitled "Synthetic Insecticidal Crystal Protein Gene" (assignment to Lubrizol Genetics Inc. recorded October 24, 1988), now abandoned, as a continuation-in-part of U.S. Application 06/848, 733, filed April 4, 1986.
February 24, 1989 - David A. Fischhoff and Frederick J. Perlak filed U.S. Application 07/315, 355, entitled "Synthetic Plant Genes And Method For Preparation" (assignment to Monsanto Company recorded February 24, 1989), now abandoned.
August 7, 1989 - Kenneth A. Barton and Michael J. Miller filed U.S. Application 07/390, 561, entitled "Expression of Genes In Plants" (assignment to Agracetus, Inc. recorded August 7, 1989; assignment to Monsanto Company recorded October 15, 1996), now abandoned.
February 12, 1990 - David A. Fischhoff and Frederick J. Perlak filed U.S. Application 07/476, 661, entitled "Synthetic Plant Genes And Method For Preparation" (assignment to Monsanto Company recorded February 12, 1990), now abandoned, as a continuation-in-part of U.S. Application 07/315, 355, filed February 24, 1989.
January 28, 1992 - Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray filed U.S. Application 07/827, 844, entitled "Synthetic Insecticidal Crystal Protein Gene" (assignment to Mycogen Plant Science, Inc., recorded April 1, 1993), now abandoned, as a continuation-in-part of U.S. Application 07/242, 482, filed September 9, 1988.
January 30, 1992 - Kenneth A. Barton and Michael J. Miller filed involved U.S. Application 07/827, 906, entitled "Improved Expression of Genes In Plants" (assignment to Monsanto Company recorded October 15, 1996; assignment to Monsanto Technology LLC recorded June 13, 2001), as a continuation of U.S. Application 07/390, 561, filed August 7, 1989.
October 9, 1992 - David A. Fischhoff and Frederick J. Perlak filed U.S. Application 07/959, 506, entitled "Synthetic Plant Genes" (assignment to Monsanto Technology LLC recorded June 13, 2001), as a continuation of U.S. Application 07/476, 661, filed February 12, 1990.
May 3, 1993 - Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray filed U.S. Application 08/057, 191, entitled "Synthetic Insecticidal Crystal Protein Gene" (assignment to Mycogen Plant Science, Inc., recorded April 1, 1993), as a continuation of U.S. Application 07/827, 844, filed January 28, 1992.
January 6, 1995 - Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray filed U.S. Application 08/369, 839, entitled "Synthetic Insecticidal Crystal Protein Gene," as a division of 08/057, 191, filed May 3, 1993.
January 6, 1995 - Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray filed U.S. Application 08/369, 835, entitled "Synthetic Insecticidal Crystal Protein Gene" (assignment to Mycogen Plant Science, Inc., recorded April 1, 1993), as a continuation-in-part of 08/057, 191, filed May 3, 1993.
January 10, 1995 - involved U.S. Patent 5, 380, 831 issued from Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray, U.S. Application 08/057, 191, filed May 3, 1993.
May 3, 1995 - David A. Fischhoff and Frederick J. Perlak, filed involved U.S. Application 08/434, 105 entitled "Synthetic Plant Genes And Method For Preparation" (assignment to Monsanto Technology LLC recorded June 13, 2001), as a divisional of U.S. Application 07/959, 506, filed October 9, 1992.
May 19, 1996 - U.S. Patent 5, 500, 365 issued from David A. Fischhoff and Frederick J. Perlak, U.S. Application 07/959, 506, filed October 9, 1992.
August 29, 1996 - Michael J. Adang and Elizabeth E. Murray filed U.S. Application 08/705, 438, entitled "Synthetic Insecticidal Crystal Protein Gene Having A Modified Frequency Of Codon Usage" (assigned to Mycogen Plant Science, Inc.), as a divisional of U.S. Application 08/369, 835, filed January 6, 1995.
August 29, 1996 - Michael J. Adang and Elizabeth E. Murray filed U.S. Application 08/704, 966, entitled "Transgenic Plants Comprising Synthetic Insecticidal Crystal Protein Gene Having A Modified Frequency Of Codon Usage" (assigned to Mycogen Plant Science, Inc.), as a division of U.S. Application 08/369, 839, filed January 6, 1995.
October 22, 1996 - U.S. Patent 5, 567, 600 issued from Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray, U.S. Application 08/369, 835, filed June 6, 1995, including a disclaimer of the terminal portion of the patent extending beyond the expiration date of Adang's involved U.S. Patent 5, 380, 831.
October 22, 1996 - U.S. Patent 5, 567, 862 issued from Michael J. Adang, Thomas A Rocheleau, Donald J. Merlo, and Elizabeth E. Murray, U.S. Application 08/369, 839, filed June 6, 1995.
November 7, 1996 - Interference 103, 781 was initially declared essentially as follows (Paper No. 2):
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