Scott v. Koyama
| Decision Date | 12 July 2002 |
| Docket Number | 635,Patent Interference 103 |
| Parties | JOHN D. SCOTT and RACHEL A. STEVEN Junior Party, [1] v. SATOSHI KOYAMA, YUKIO HOMOTO and NAOKI ESAKA Junior Party, [2] |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
Final Hearing: August 14, 2000
Before CAROFF, DOWNEY, and LORIN, Administrative Patent Judges.
LORIN Administrative Patent Judge.
Scott et al. (Scott) has been accorded a priority date of March 29 1991.[3] Koyama et al. (Koyama) has been accorded a priority date of March 13, 1990.[4] By virtue of the earlier priority date of March 13, 1990, Koyama is designated the senior party in this interference. 37 C.F.R §§ 1.657 and 1.601(m).
Count 1, the sole count at issue, reads as follows:
Count 1
or
In a method for producing 1, 1, 1, 2-tetrafluoroethane in two reaction stages involving (1) the reaction of trichloroethylene and hydrogen fluoride to produce 1, 1, 1-trifluoro-2-chloroethane and (2) the reaction of 1, 1, 1-trifluoro-2-chloroethane with hydrogen fluoride to produce 1, 1, 1, 2- tetrafluoroethane, the improvement which comprises carrying out the reaction (2) between 1, 1, 1-trifluoro-2-chloroethane and hydrogen fluoride at a temperature in the range of 280-4500 C., carrying out the reaction (1) between trichloroethylene and hydrogen fluoride at a temperature in the range 2000-4000 C., and below that used in reaction (2), and recycling unconverted 1, 1, 1-trifluoro-2-chloroethene [sic] with hydrogen fluoride for further reaction in the presence of trichloroethylene.
The claims of the parties which correspond to this count are:
The parties filed the following briefs and reply briefs:
Koyama filed a Record (paper no. 91, filed December 12, 1997) and Exhibits (paper no. 93, filed December 12, 1997). Scott filed a record with Testimony (paper no. 92, filed December 12, 1997) and Exhibits (paper no. 94, filed December 12, 1997). Both parties appeared at final hearing represented by counsel.
No issue of no interference-in-fact was raised in the briefs at final hearing.
The issues presented for our decision include Scott's motion[8], the parties cases for priority and statement of the issues taken from the parties' briefs.
SM1 under 37 C.F.R. § 1.633(a) for judgment against Koyama on the ground that Koyama claim 7 corresponding to the Count is not patentable to Koyama because Koyama has failed to satisfy the best mode requirement of 35 USC § 112, first paragraph. (filed June 3, 1996; paper no. 22)
Scott's and Koyama's statements of the issues are reproduced verbatim from their briefs.
Scott (SB 1)
SI1 Is Scott et al entitled to a priority award by showing introduction of the invention into the United States before March 13, 1990 with diligence from just before that date up to constructive reduction to practice by the filing of the Scott et al U.K. application on March 29, 1990?
SI2 Is Scott et al entitled to a priority award by showing introduction of the invention into the United States before March 13, 1990 with diligence from just before that date up to actual reduction to practice by the construction and operation of a plant using the process at issue in the U.S. by the end of December, [sic] 1992?
SI3 Is the introduction of the Scott et al invention into the United States prior to March 13, 1990 in and of itself so complete as to constitute an actual reduction to practice entitling Scott et al to a priority award when the process was actually reduced to practice in the U.K. specifically for use in a plant to be built in the U.S., and the process as introduced into the U.S. was directly transposed into commercial use in that U.S. plant?
SI4 Has Koyama et al satisfied the best mode requirement of 35 USC §112, first paragraph?
Koyama (KB 6-7)
KI1 Does the failure of the Scott Record to include any evidence that the process of the Count was actually demonstrated or performed by Scott in the United Sates before the priority date of March 13, 1990 of Koyama prevent Scott from proving priority against Koyama based on an actual reduction to practice?
KI2 Does the evidence of activity in the Scott Record directed only to commercially developing the process during the critical period of March 12-19, 1990 prevent Scott from proving priority against Koyama based on "diligence" towards an actual reduction to practice?
KI3 Does the failure of the Scott Record to include any evidence of a best process mode concealed by the Koyama inventors prevent Scott from proving that the patent application of Koyama violates the best mode requirement of 35 U.S.C. § 112?
We will address the priority issue first, followed by a discussion of the patentability issue.
It is not the burden of the Board to scour the record, research any legal theory that comes to mind and serve generally as an advocate for a party. Compare Ernst Haas Studio, Inc. v Palm Press, Inc., 164 F.3d 110, 112, 49 U.S.P.Q.2d 1377, 1379 (2d Cir. 1999). Accordingly, in making our determination as to priority we have reviewed only those specific facts and arguments of the parties relied upon in their briefs. See 37 C.F.R. § 1.656(b)(5) and(b)(6)[9].
Senior party Koyama relies on their priority date of March 13, 1990 to prove a constructive reduction to practice (Preliminary Statement, paper no. 21). Koyama does not present evidence to prove conception or actual reduction to practice.
Junior party has the burden of establishing priority by a preponderance of the evidence. 37 C.F.R. § 1.657(b). Bosies v. Benedict, 27 F.3d 539, 542, 30 U.S.P.Q.2d 1862, 1864 (Fed. Cir. 1994). Accordingly, Scott, as the junior party, must establish that it actually reduced to practice the invention of the count before March 13, 1990, Koyama's priority date, or that it first conceived the invention prior to that date and proceeded with reasonable diligence from a time just prior to the opponent entering the field toward a reduction to practice, either actual or constructive. 35 U.S.C. § 102(g). Haskell v. Colebourne, 671 F.2d 1362, 1365, 213 U.S.P.Q. 192, 194 (CCPA 1982).
Scott presents three lines of argument to meet its burden of establishing priority. Scott argues that it has demonstrated:
In the first line of argument, Scott contends that they have demonstrated prior conception with reasonable diligence from just before Koyama's entry into the field (i.e., March 13, 1990) up to constructive reduction to practice.
Prior Conception: Scott alleges prior conception on the grounds that the invention was disclosed to others in the U.S. no later than October 1, 1989 (Preliminary Statement paper no. 27). Koyama (KB 1) "concedes that Scott has established conception before the Koyama priority date". Accordingly, the fact that Scott has established conception prior to Koyama's priority date is not in dispute.
Constructive Reduction to Practice: Scott alleges a constructive reduction to practice on March 29, 1990. During the preliminary motion period, Scott moved under 37 C.F.R. § 1.633(f) to be accorded the benefit of G.B. application No. 90 07029.3, filed March 29, 1990. Koyama (paper no. 46) opposed the motion. That motion (paper no. 25) was granted (Decision on Motions, paper no. 47) and "Koyama no longer opposes the motion" (KB 6). Accordingly, the fact that Scott has established constructive reduction to practice on March 29, 1990, is not in dispute.
Diligence: The dispute centers on whether Scott has shown reasonable diligence from just prior to Koyama's entry into the field (i.e., March 13, 1990) until Scott's constructive reduction to practice (i.e., March 29, 1990). Accordingly, Scott must show reasonable diligence for no less than the period March 12-29, 1990.
To establish diligence, Scott must account for the entire 17-day critical period. Specific activities during the critical period must be demonstrated and they must be specific as to dates and facts. Nashef v. Pollock, 4 U.S.P.Q.2d 1631, 1635 (Bd. Pat. App. & Int. 1987). The activities must have occurred in the United States. Wilson v Sherts, 81 F.2d 755, 760, 28 U.S.P.Q. 379, 383-84 (CCPA 1936). Furthermore, the activities constituting diligence must be the result of efforts made on behalf of the inventor (Fearon v. Krasnow, 172 F.2d 233, 80...
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