From: RNEIFELD@oblon.com
Sent: Wednesday, 24 January 2001 19:10
To: interference.rules@uspto.gov
Cc: patentinterference@egroups.com
Subject: Interference-in-fact
The Standard for the Existence of an Interference
I.Introduction
I respond below to the USPTO's request for comments on the propriety of the two-way patentability analysis for
the Director to be of the opinion that an interference-in-fact exists. That request appears in the notice "Standard
for Declaring a Patent Interference," 65 FR 79809 (December 20, 2000). I respond to many of the conclusions
and statements in the notice, and then I address the three questions posed at the end of the notice.
II.Response to the Conclusions and Statements in the Notice
The notice asserts that the Director has discretion in determining what constitutes an interference, citing Ewing
v. United States ex rel. Fowler Car. Co., 244 US 1, 11 (1917)). I agree that the notice's interpretation of Ewing
is correct. I also agree that Ewing is still good law, since 35 USC 135(a) now states that it is "the opinion of the
Director" that determines whether one application and another application or patent interfere.
The notice asserts that the Director's decision regarding whether to declare an interference based upon a
particular fact pattern is not subject to review (citing United States ex rel. International Money Machine Co. v.
Newton, 47 App.D.C. 449, 450 (1918).) I agree that the notice's assertion is a correct conclusion to be drawn
from United States ex rel. International Money Machine Co. insofar as the facts are limited to a single case.
However, I do not agree that United States ex rel. International Money Machine Co. authorizes the Director to
decide to declare an interference in one case and to not declare an interference in another case where the
underlying issues are identical. Whatever action the Director takes in various cases must not be arbitrary,
capricious, or an abuse of discretion. Cf. Abrutyn v. Biovanniello, 15 F.3d 1048, 1050- 51, 29 USPQ2d 1615,
1617 (Fed. Cir. 1994). In addition, the Director's action must not violate the constitution. Rydeen v. Quigg, 748
F.Supp. 900, 906, 16 USPQ2d 1876, 1881 (D.D.C. 1990).
The notice asserts that a third party has no right to intervene in the prosecution of a particular patent, citing
Animal Legal Defense Fund v. Quigg, 932 F.2d 714, 715 (D.C.Cir. 1925). I do not agree with the sweeping
conclusion drawn in the notice in reliance upon Animal Legal Defense Fund. Animal Legal Defense Fund was
not a case where two claimants existed, and it was not a case where two claimants presented interfering
claims. In the case where there are first and second claimants whose claims interfere, it is reasonable to allow
a first claimant to intervene in the second claimant's application for two reasons. First, if the second claimant's
application issues, the first claimant's claims will be rejected based upon the second claimant's issued patent.
Cf. In re Ogiue, 517 F.2d 1382, 1386, 186 USPQ 227, 231 (CCPA 1975). That result is unfair, because the first
claimant may be entitled to the interfering claim. Second, parties with conflicting claims are much more likely to
infringe those claims than a third party. Thus, the first claimant may be harmed by the improper issuance of the
patent containing the interfering claim to the second claimant, because the patentee (second claimant) can
then sue the first claimant for infringement.
Underlying the reasoning that rival claimants may have a right to intervene in special cases is the public policy
of issuing only one patent on one patentable invention. See Neifeld, "Viability of the Hilmer Doctrine," 81
JPTOS 544 (July 1999) at section III, p. 546. It has long been recognized as the duty of the USPTO to
implement this public policy. See Reed v. Landman, 1891 C.D. 73, 79 (Comm'r 1891)("The Patent Office must
not only determine between actually conflicting claims, but it must also protect the public from more than one
patent on the same invention. Hence, it declares interferences, not between claims, but between applications
containing conflicting claims, or between the application and the unexpired patent containing conflicting claims,
as the case may be."). Allowing intervention in special cases may promote that public policy.
The notice relies upon Winter v. Fujita, 53 USPQ2d 1234 (BPAI 1999), reh'g denied, 53 USPQ2d 1478 (BPAI
2000) (expanded panel consisting of Stoner, Chief Administrative Patent Judge, McKelvey, Senior
Administrative Patent Judge, and Schafer, Lee, and Torczon, Trial Section Administrative Patent
Judges)(opinion by SAPJ McKelvey) for the conclusion that:
Recent precedent of the Trial Section of the Interference Division of the Board of Patent Appeals and
Interferences confirms that resolution of whether an interference-in-fact exists involves a two-ways patentability
analysis.
The precedent relied upon for this conclusion in the notice is the statement in Winter that:
Resolution of an interference-in-fact issue involves a two-way patentability analysis. The claimed invention of
Party A is presumed to be prior art vis-a-vis Party B and vice versa. The claimed invention of Party A must
anticipate or render obvious the claimed invention of Party B and the claimed invention of Party B must
anticipate or render obvious the claimed invention of Party A. When the two-way analysis is applied, then
regardless of who ultimately prevails on the issue of priority, the Patent and Trademark Office (PTO) assures
itself that it will not issue two patents to the same patentable invention. [Winter, at 1243]
In my opinion, this holding in Winter is directly contrary to 37 CFR 1.601(j) and (n). In addition, this holding in
Winter does not enable the USPTO to prevent issuing certain invalidpatents for reasons I present at the end of
this response. 37 CFR 1.601(j) and (n) define the basis for what constitutes the Directors's opinion that there is
an interference-in-fact. Interference-in- fact is a term defined in 37 CFR 1.601(j) to exist when two parties have
claims that "define the same patentable invention." The term "same patentable invention" is defined in 37 CFR
1.601(n) to exist for an invention 'A' relative to invention 'B':
when invention 'A' is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention 'B'
assuming invention 'B' is prior art with respect to invention 'A'.
Hence, the Director has defined, by rule, what constitutes the basis for the Director's opinion, within the
meaning of 35 USC 135(a), that an interference exists in any give case. Specifically, the Director has defined
by rule that an interference exists when the one-way obviousness test specified in 601(n) is satisfied.
The rules established by the USPTO govern proceedings in the USPTO. 35 USC 2(b)(2) (As amended Nov.
29, 1999). Moreover, the rules have the force and effect of law. Wyden v. Commissioner of Patents and
Trademarks, 807 F.2d 934, 935-36, 231 USPQ 918, 919-20 (Fed. Cir. 1986). Hence the opinion in Winter is
inconsistent with law because it is inconsistent with 37 CFR 1.601(j) and (n).
37 CFR 1.601(j) and (n) were implemented in 1984. The 1984 rule change implementing 37 CFR 1.601(j) and
(n) define the law regarding what constitutes the Director's opinion within the meaning of 35 USC 135(a) that
an interference exists.
Prior to the 1984 rule change, the Director (then Commissioner) was of the opinion that there was an
interference-in-fact when claims of two parties were patentably indistinct from one another. In Aelony v. Arni,
547 F.2d 566, 192 UPSQ 486 (CCPA 1977), the Court of Customs and Patent Appeals indicated that the
patentable indistinctness test was (in 1977) the test for interference-in-fact, and the Court approved of that test
because it carried out the statutory requirement that the USPTO issue only one patent for claims that were not
patentably distinct, stating that:
Turning to the merits, Aelony et al. argue that the interference was improper ab initio under 35 USC 135(a)5
because the cyclopentadiene material employed by Aelony et al. does not overlap the eight materials employed
by Arni et al. Accordingly, say Aelony et al., there is no interference in fact. We disagree. We first note two
published board opinions which addressed this same argument of no overlap, asserted in the same context as
in the present case, viz., Dewilde v. Leigh, 191 USPQ 256 (PTO Bd. Pat. Int'f. 1976); Moore v. McGrew, 170
USPQ 149 (Bd. Pat. Int'f. 1971). In each case, the board ruled that the test of interference in fact is not whether
two sets of claims overlap, but whether they are patentably distinct from each other. In each case, the board
found that, although the two sets of claims before it were mutually exclusive, they were patentably indistinct,
and hence there was an interference in fact. We believe that these board precedents correctly set forth the test
of interference in fact and are grounded on sound policy considerations.6 Sections 102, 103, and 135 of 35
USC clearly contemplate ― where different inventive entities are concerned ― that only one patent should
issue for inventions which are either identical to or not patentably distinct from each other. Hence, we view the
phantom count practice as a proper procedural tool established by the PTO in order to ensure, where
necessary, what the statute intends, viz., that only one patent should issue for one inventive concept.
Moreover, we believe that there is ample precedent from this court for framing the test of interference in fact in
terms of whether two sets of claims are patentably distinct from each other. See the McCabe case,
subsequently quoted with approval in Brailsford v. Lavet and in Nitz v. Ehrenreich, all three cases cited supra.
------------------------------------------535 USC 135(a) reads as follows:
Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with
any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or
applicant and patentee, as the case may be. The question of priority of invention shall be determined by a
board of patent interferences (consisting of three examiners of interferences) whose decision, if adverse to the
claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims
involved, and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor. A final
judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall
constitute cancellation of the claims involved from the patent, and notice thereof shall be endorsed on copies of
the patent thereafter distributed by the Patent and Trademark Office.
6We note in passing an article in 3 Pat. L. Persp. Section C.1[4] (1971 Dev.) which comments favorably on the
Moore case. [Aelony, at 569-70, 489-90.]
The patentable indistinctness test for the existence of an interference-in-fact dates back at least as far as
Hammond v. Hart, 1898 C.D. 52, 61 (Comm'r 1898).
In summary, the conclusion in Winter is contrary to the rules, specifically 37 CFR 1.601(n), implemented in
1984. Prior to 1984, an interference-in-fact existed when claims of two parties were patentably indistinct, as the
term "patentably indistinct" is defined in the case law.
The notice asserts that "there is no authority under the law, to turn interference proceedings under 35 U.S.C.
135(a) into pre-grant oppositions or post-grant cancellations." In reply, I submit that there is no authority
precluding the USPTO from taking that action in an interference, since 35 USC 135(a) authorizes USPTO to
decide questions of priority and patentability, and 35 USC 6(b) requires the USPTO to do so. Therefore, that
statement in the notice is not relevant to the standard the Director should apply in determining whether an
interference exists.
The notice states that "there is no desire on the part of the USPTO ... to turn interference proceedings under 35
U.S.C. 135(a) into pre-grant oppositions or post-grant cancellations." In reply, the desire of the USPTO should
be to implement its mission, which is defined by statute. Section 35 USC 6(b) of the statute (revised November
29, 1999) states that the Board "shalldetermine priority and patentability of invention in interferences declared
under section 135(a)...." Emphasis supplied. Unlike 35 USC 135(a), section 6 does not indicate that
patentability determinations in an interference are at the discretion of the USPTO.
III.Response to the Three Questions Posed in the Notice
The notice poses three questions, which I now address. In the first question, the notice asks:
If one-way patentability analysis is sufficient to establish an interference-in-fact, would it be possible to have an
interference with two counts as set out in Example 4, reproduced above?
The answer to this question is yes, as I demonstrate below. For convenience, I copy here Example 4:
Example 4: Application G contains patentable claims 1 (engine), 2 (6-cylinder engine), and 3 (engine with a
platinum piston). Application H contains patentable claims 11 (engine) and 15 (engine with a platinum piston).
Claims 1 and 2 of application G and claim 11 of application H define the same patentable invention. Claim 3 of
application G and claim 15 of application H define a separate patentable invention from claims 1 and 2 of
application G and claim 11 of application H. If an interference is declared, there would be two counts: Count 1
(engine) and Count 2 (engine with a platinum piston). Claims 1 and 2 of application G and claim 11 of
application H would be designated to correspond to Count 1. Claim 3 of application G and claim 15 of
application H would be designated to correspond to Count 2.
In addressing the questions posed in the notice regarding Example 4, I assume that an engine containing a
platinum piston would not have been obvious in view of either an engine or an engine containing six cylinders.
Applying 37 CFR 1.601(n) to the claim to an engine with a platinum piston indicates that the claim to an engine
with a platinum piston is (1) not the same patentable invention as a claim to an engine and (2) a separate
patentable invention from the claim to an engine.
37 CFR 1. 601(f) specifies that "each count shall define a separate patentable invention." The foregoing
analysis under 601(n) applied to the claim to an engine with a platinum piston indicates that the claim to an
engine with a platinum piston is a separate patentable invention from the claim to an engine. Hence, the
answer to the first question posed in the notice is yes.
The second question posed by the notice is:
How would having an interference with between claims claim 1 of application G and claim 15 of application H of
Example 4 square with the holding in Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413, 416-17 (CCPA
1976)?
In reply to the second question posed in the notice, I submit that Nitz is not relevant since the Commissioner's
opinion in year 1976 regarding what constituted an interference is different from the Director's opinion in year
2001 specified in 601(n). See the discussion of Aelony, supra. Nitz was an interpretation of the Commissioner's
(now Director's) opinion.
The third question posed in the notice is:
If a one-way patentability analysis is sufficient, what would it take to establish that there is no interference-infact in a given case?
In reply, there would be no interference in fact in two situations.
In the first situation, claim of the first party would not have been obvious in view of the subject matter defined by
the claim of the second party and the claim of the second party would not have been obvious in view of the
subject matter defined by the claim of the first party.
In the second situation, the claim of the first party would have been obvious in view of the claim of the second
party, the claim of the second party would not have been obvious in view of the claim of the first party, and the
first party has priority for its claim.
The answer to the second question is that establishing no interference-in-fact in a particular case would take
showings of fact supporting the conclusions of obviousness, non- obviousness, and priority required in one of
the two foregoing situations.
Applying the two-ways obviousness test for interference-in-fact will create anomalous situations in which the
USPTO will have to knowingly issued likely invalid patents. If the two- ways test is followed, that means that the
USPTO interprets 37 CFR 1.601(n) to require a two- ways obviousness for there to be claims to the same
patentable invention. 37 CFR 1.131 incorporates the test specified in 37 CFR 1.601(n). If 601(n) is interpreted
to require two-ways obviousness, then a genus claimant can overcome a rejection based upon a species
patent by filing a 37 CFR 1.131 declaration and admitting that the species claim was non-obvious in view of the
applicant's genus claim. Cf. In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). However, it is
possible, even likely, that the species patentee invented prior to the genus applicant, in which case the genus
applicant's claim would be unpatentable. However, under the rationale of Winter, the USPTO would have no
basis to reject the genus applicant, and it could not institute an interference. That would result in the USPTO's
knowingly issuing a likely invalid patent. That result would be contrary to the USPTO's mission and to public
policy.
IV.Conclusion
In conclusion, the USPTO should either overrule Winter and follow the one-way test specified in 37 CFR
1.601(n), or it should amend 37 CFR 1.601(n) to resolve the conflict between 37 CFR 1.601(n) and Winter. If
the USPTO maintains the two-ways test for when an interference-in-fact exists (e.g., by amending 37 CFR
1.601(n) so that it is in accord with Winter), it needs to fix the problem a two-ways test creates for 37 CFR
1.131 so that the USPTO can prevent issuance of invalid patents.
Richard A. Neifeld
Chair, AIPLA Interference Committee
Rick Neifeld
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1755 Jefferson Davis Highway
Arlington, VA 22202
Tel: 703-412-6492
Fax: 703-413-2220
Email: rneifeld@oblon.com
