Hester v. Allgeier
Decision Date | 13 October 1982 |
Docket Number | No. 82-508.,82-508. |
Citation | 687 F.2d 464 |
Parties | Jackson B. HESTER, Jr. v. Hans ALLGEIER and Andre Gagneux. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Sidney W. Russell, Peter J. Georges, Arlington, Va., and John T. Reynolds, John Kekich, Kalamazoo, Mich., for appellant.
Joseph G. Kolodny, New York City, and Karl F. Jorda, Ardsley, N.Y., for appellees.
Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.
This is an appeal from the decision of the Patent and Trademark Office Board of Patent Interferences ("board") awarding priority of the subject matter of count 2 to the party Allgeier and Gagneux ("Allgeier") based on its holding that counts 1 and 2, the only counts in interference, are patentably distinct. (Hester has been awarded priority on count 1.) We affirm.
This case is before the court for the second time.1 The interference2 was originally declared on one count drawn to a chemical genus having central nervous system tranquilizing properties. During the motion period, based on comparative tests set forth in the declaration of Delini-Stula which was introduced by Allgeier, the primary examiner on his own motion added count 2 to the interference, stating that counts 1 and 2 were patentably distinct. Count 2 is drawn to the methanol species of the genus set forth in count 1. Hester submitted counter-affidavits setting forth comparative tests conducted by the employees of his assignee and unsuccessfully contested the examiner's holding of patentable distinctness.
In its original decision, the board awarded priority to Hester on count 1 and to Allgeier on count 2. It also held that Allgeier had satisfied the "best mode" requirement, assuming, arguendo, that "best mode" was ancillary to priority. However, the board expressly declined to consider whether counts 1 and 2 were patentably distinct, holding that patentable distinctness was not ancillary to priority. On appeal, this court held that whether counts 1 and 2 were patentably distinct was ancillary to priority, the board's decision was vacated, and the case was remanded for consideration of the patentable distinctness issue.
On remand, the board vacated the portions of its opinion dealing with patentable distinctness and best mode and said:
OPINIONIn deciding whether the board's award of priority of the subject matter of count 2 was correct, it is necessary to determine whether the board properly held that the counts are patentably distinct.
Hester argues that the board improperly considered the affidavit and declaration evidence before the primary examiner to sustain the examiner's holding of patentable distinctness and that evidence in an interference must be in the form of depositions, unless otherwise stipulated by the parties. 37 CFR 1.271, 1.272. We agree that the board should not review the inadmissible ex parte evidence before the examiner, but, rather, should rely on evidence introduced during the testimony period to determine whether the counts are patentably distinct.
Motions before the primary examiner are governed by 37 CFR 1.231. Of the various motions enumerated, it is only in the case of motions to dissolve, where one party is a patentee, that "facts sought to be established by affidavits, declarations or evidence outside of official records and printed publications will not normally be considered...." There is no such prohibition against affidavit or declaration evidence in 37 CFR 1.231(a)(2), providing for motions to amend by addition or substitution of new counts. Therefore, the primary examiner properly considered the affidavits and declarations which formed the basis of his decision.
With respect to evidence reviewable by the board, in Stoudt v. Guggenheim, 651 F.2d 760, 764 n.8, 210 USPQ 359, 364 n.10 (Cust.&Pat.App.1981), this court indicated that the board should consider the question of patentable distinctness de novo, thus: "An appropriate procedure to preserve the issue of patentable distinctness would be to adduce evidence on that issue during the evidentiary period and to then argue the issue before the board which then renders its independent...
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Utter v. Hiraga
...a generic count to one inventor, while awarding a patentably distinct species count to another, however. See Hester v. Allgeier, 687 F.2d 464, 215 USPQ 481 (CCPA 1982). The subject matter of the '068 interference was a generic count, not the internal and external pivot species. A specificat......