The opinion in support of the decision being
entered today is not binding precedent of the board
Paper 109
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ROBERT F. SHAW
Appeal 1997-3258
Application 07/117,393'
Before: FLEMING, Chief Administrative Patent Judqe, a d HARKCOM,
Vice-Chief Administrative Patent Judqe, and THOMAS and GARRIS,
Administrative Patent Judqes, and McKELVEY, Senior Administrative
Patent Judqe.
McKelvey, Senior Administrative Patent Judqe.
MEMORANDUM OPINION and ORDER DENYING REHEARING
37 CFR 5 41.52 (a)(1)
A.
Introduction
Applicant seeks rehearing of our DECISION ON APPEAL UNDER
35 U.S.C. 5 134 (Paper 94, entered 21 May 2004) . 2 See,REQUEST
FOR REHEARING UNDER 37 C.F.R. 5 1.197(d) (Paper 95, f:iled 21 July
2004) (hereinafter "REQUEST FOR REHEARING") .
We delayed action on the REQUEST FOR REHEARING with the
expectation that applicant might provide us more information as
to the status of a civil action which forms part of t:he basis of
' Application for patent filed 2 November 1987. The real party in
interest is applicant, Dr. Robert F. Shaw (Supplemental Brief on Appeal,
Paper 66, page 1 ) . The application on appeal is said to be a continuation
of application 06/295,929, filed 21 June 1981 (Papers 1-28), which is said
to be a division of application 05/898,388, filed 20 April 1978.
An updated Table of Contents appears as Appendix 2 to this opinion;
Appendix 1 , an earlier version of the Table of Contents, appear:: in our
original opinion (Paper 94, page 3 n.3).
our decision to affirm the examiner's rejection based on a lack
of enablement. Since applicant did not come forward on his own,
we entered an ORDER FOR APPLICANT TO BRIEF ADDITIONAL 'MATTERS
(Paper 96).
Applicant has responded to our ORDER. See RESPONSE TO
BOARD'S ORDER FOR APPLICATION TO BRIEF ADDITIONAL MATTERS UNDER
37 C.F.R. § 41.50(d) (Paper 100) (hereinafter "RESPONSE"). The
RESPONSE is deemed to have been timely filed.
The following documents accompanied applicant's RESPONSE:
1.
Transmittal Letter (Paper 99).
2.
Response to board's order (Paper 100) .
3.
Express Mail Certificate (Paper 101).
4.
Declaration of Charles R. Brustman (Paper 102).
5.
Declaration of Chi-Hsin Chang (Paper 103).
6.
Declaration of Drago N. Gregov (Paper 1.04).
7.
Declaration of Robert C. Morgan (Paper 105).
8.
Declaration of Nicola A. Pisano (Paper 106)'
accompanied by a NOTICE OF APPEARANCE fLND REQUEST
FOR SERVICE filed in the U.S. District Court for
the Northern District of California in Shaw v.
Carter, Civil Action C-86-5575 MHP.
9.
Declaration of S. Craig Rochester (Paper 107)'
accompanied by:
a.
Exhibit 1: DEFENDANTS' NOTICE OF MOTION AND
MOTION FOR SUMMARY JUDGMENT ON COIJNT ONE OF
THE COMPLAINT filed in Shaw v. Carter
(N.D. Cal.).
b.
Exhibit 2: Docket entries 1-73 in Shaw v.
Carter.
c.
Exhibit 3 : PLAINTIFF SHAW'S MEMOIIANDUM IN
OPPOSITION TO MOTION FOR SUMMARY !JUDGMENT
filed in Shaw v. Carter.
d.
Exhibit 4: RAYCHEM MEMORANDUM IN OPPOSITION
TO MOTION FOR SUMMARY JUDGMENT-CO'LTNTONE OF
COMPLAINT filed in Shaw v. Carter.
e.
Exhibit 5: STIPULATED REQUEST FOR DISMISSAL
OF CLAIMS BETWEEN RAYCHEM AND DEFENDANTS
(F.R.C.P.41 (a)(2)) filed in Shaw v. Carter.
f.
Exhibit 6 : Letter dated 11 May 1988 from
Patrick J. Mahoney to Magistrate Judge
Claudia Wilkens of the Northern District of
California.
10. Declaration of Mark D, Rowland (Paper 108),
accompanied by a letter dated 11 July 2005 from
Rowland to Hon. Marilyn Patel, U.S. District Judge
in the Northern District of California.
B.
Findings of fact
Findings 1 through 114 appear in our DECISION ON APPEAL
UNDER 35 U.S.C. 5 134 (Paper 94).
Based on applicant's RESPONSE (Paper 100) and accompanying
documents, we make the following additional Findings of Fact 115
through 171, all of which are believed to be supported by at
least a preponderance of the evidence.
We adhere to our original Findings of Fact 1 through 114
unless inconsistent with the additional Findings of Fact set out
below.
Applicant's knowledqe of dismissal of civil a c t : m
115.
In Carter v. Shaw, Interference 100,775, the board
entered a final decision on 05 August 1986 (100,775, Pa.per 1,
page 1) .
116.
The board's decision was adverse to Shaw.
117.
In Shaw v. Carter, Civil Action C-86-5575 MHP
(N.D. Cal.), filed on 30 September 1986, Shaw sought judicial
review under 35 U.S.C. § 146 of the adverse decision entered by
the board in Interference 100,775 (RESPONSE, page 2; Rochester
Declaration, Paper 107, Exhibit 2, Docket Entry 1').
118.
The U.S. District Court for the Northern District
of California assigned judicial oversight of the civil action to
Hon. Marilyn Hall Patel, U.S. District Judge.
119.
The civil action has been dismissed.
120.
No later than the evening of 2 May 2000, an
attorney for applicant (Nicola A. Pisano, Esq. ) learned that the
civil action had been dismissed (Pisano Declaration, Paper 107,
11 6, 9 & 10). See also Paper 94, page 20, Finding 96.
121.
Our understanding of applicant's position is that
applicant did not know prior to the evening of 2 May 2000 that
the civil action had been dismissed.
122.
In any event, "[clounsel for applicant * * *
discussed the matter with applicant * * * after learning of [the]
dismissal in 2000, and began to make inquiries with the
[District] Court in April of 2003" (RESPONSE, Paper 100, page 6) .
We note that the copy of the Docket Entries submitted as Exhibit 2
is not complete. For example, the dates on at least the first page are not
complete. In any event, we know from other sources that the Civil Action was
filed in 1986 (seethe Docket Entries in Exhibit A of Paper 47 and Paper 17,
page 2) .
Activity in the civil action
123.
The docket entries for the civil action reveal
that some activity took place in the civil action between
30 September 1986 (when the civil action was filed) and at least
21 March 1988.4
124.
Among other things, on or about 25 September 1987
defendant Carter filed a motion for summary judgment on count one
of the complaint (Rochester Declaration, Paper 107, Exhibit 1;
Exhibit 2, docket entry #47) .
125.
We will assume that "count one" sought t:o set
aside, i.e., "reversal," of the board's final decision in
Interference 100,775.
126.
On 19 October 1987, plaintiff Shaw (applicant)
filed a memorandum in opposition to defendant Carter's motion for
summary judgment (Rochester Declaration, Paper 107, Exhibit 3).
127.
On 20 October 1987, plaintiff Raychem fi~ledits
memorandum in opposition to defendant Carter's motion for summary
judgment (Rochester Declaration, Paper 107, Exhibit 4).
128.
The docket entries do not reveal that the district
court rendered a decision on the motion for summary judgment.
" [Sl ettlement discus~ions~~
are said to have taken
129.
place "from time to time during the years 1987 to 1996" (Morgan
Declaration, Paper 105, 1 5; Rochester Declaration, Paper 107,
1 12 and Exhibit 6--letter to Hon. Claudia Wilkens, Magistrate
Judge for the Northern District of California).
Effort to determine why civil action was dismissed
130.
According to applicant, efforts have been made to
determine why the civil action has been dismissed.
Pisano
Nicola A. Pisano, Esq., represented applicant from
131.
about 1991 through 2003 (Pisano Declaration, Paper 106, 71 3-4;
see also Paper 47, page 14).
4
We believe the 21 March 1988 date to be correct.
the copy of the docket entries is not complete.
As
noted earlier,
132.
Pisano states that on 17 February 1999, she placed
a call to one of Judge Patel's Itcourtclerkst1(Pisano
Declaration, Paper 106, 11 8) .
133.
According to Pisano, the clerk advised Pisano that
the civil action was pending.
134.
On 2 May2000, Pisano contacted a "docket clerk"
and "was surprised to learn" that the civil action had been, in
her words, "administratively dismissedM (Pisano Declaration,
Paper 106, 1 9).
135.
Pisano represents that she did not receive
"notice" that the civil action had been dismissed.
136.
By "notice", we assume Pisano means "written
notice" because on 02 May 2000 Pisano received oral notice from
the docket clerk that the civil action had been dismissed.
Morqan
137.
Robert C. Morgan, Esq., was an attorney of record
in the civil action (Morgan Declaration, Paper 105, 1 4) and in
the application on appeal (Paper 37) .
138.
Morgan participated in settlement discussions from
1987 to 1996 (Morgan Declaration, Paper 105, 1 5) . 5
139.
Morgan represents that he did not receive written
notice that the civil action had been dismissed (Morgan
Declaration, Paper 105, 1 7).
140.
Morgan says that he learned of the dismissal from
Pisano (Morgan Declaration, Paper 105, 1 8).
Chanq & Greqov
141.
Chi-Hsin Chang, now a registered patent agent, at
all relevant times worked for firms representing applicant in the
civil action (Chang Declaration, Paper 103, 1 l).6
See also Paper 45,
11
5 discussing settlement discussions
The firms include (1) Fish & Neave, (2) Fish & Neave LLP and (3) Fish
Neave Intellectual Property Group of Ropes and Gray. Chang Declaration,
Paper 103, 11 1.
&
142.
During the period from April 2003 through "the
present", which we take to be 22 September 2005--the da.te Chang
appears to have signed her declaration--Changperformed various
investigations into the dismissal of the civil action (Chang
Declaration, Paper 103, I( 3 & 4) .
143.
Chang states that she found out from a librarian
at Fish & Neave who found out from Washington Document Service
("WDSM)that a PACER sheet showed the civil action had been
dismissed (Chang Declaration, Paper 103, 1 5).'
144.
Chang also found out through the same "channelN
that the file for the civil action in the Northern District of
California "was not available through the archivesu and "may
not have been archived at allM (Chang Declaration, Paper 103,
11 7
8).
145.
Chang tells us that the firm records do not
include any paper indicating that the civil action had been
administratively dismissed (Chang Declaration, Paper 103, 1 9).
146.
On at least five different days between
30 September 2003 and 15 October 2003, Chang, along with Drago
Gregov, searched the firm records for information about the
dismissal, all without success (Chang Declaration, Paper 103,
1 10; Gregov Declaration, Paper 104, 1 3).
147.
On several occasions, Chang placed calls to Gina
Augustine-Rivas, who is said to be Judge Patel's "docket clerku
(Chang Declaration, Paper 103, 1 11) .
148.
Those occasions are said to have occurred on the
following dates:
a.
23 December 2003
b.
08 January 2004
c.
02November2004
d.
09November 2004
e.
18November 2004
&
7
Chang's statement is hearsay within hearsay.
consider the statement.
Nevertheless, we will
149.
We note that the time period between 08 January
2004 and 02 November 2004 is considerable.
150.
The calls are said to have been made to
(1) request assistance in obtaining a copy of "the docket
modification" (which we assume means the "modificationu
Hadministrativelyll
dismissing the civil action) and (2) determine
the status of the case (Chang Declaration, Paper 103,
11).
151.
On other occasions, Chang left "nurnero~s~~
voice
mail messages for Augustine-Rivas (Chang Declaration, Paper 103,
1 12)
Chang says that Augustine-Rivas "gave me [Chang]
assurances that she [Augustine-Rivasl was investigating the
matter" (Chang Declaration, Paper 103, ( 13) .
153.
Chang represents that Augustine-Rivas "never
returned any of my voice-mail messages" (Chang Declaration,
152.
Paper 103, 1 15).
154.
On 22 December 2004, Chang and Gregov went to the
Federal Courthouse in San Francisco, California, to further
inquire into the MstatusN of the civil action (Chang Declaration,
Paper 103, ( 16; Gregov Declaration, Paper 104, ( 5).
155.
Chang and Gregov say they spoke with AugustineRivas, who is said to have said that she remembers seeing the
file for the case and would look for the "administrative docket
modification in the file" (Chang Declaration, Paper 103, ( 17;
Gregov Declaration, Paper 104, ( 5) .
156.
Gregov says he gave Augustine-Rivas his business
card and asked her to call him if she learned anything (Gregov
Declaration, Paper 104, ( 5; Chang Declaration, Paper 1.03, ( 18).
157.
According to Chang, Augustine-Rivas thereafter
never contacted anyone at the firm with respect to the civil
action (Chang Declaration, Paper 103, 1 19)
158.
Gregov likewise says that Augustine-Rivas never
contacted him (Gregov Declaration, Paper 104, ( 6).
159.
Chang says she called Augustine-Rivas on
11 January 2005 and left a voice mail, but no return phone call
was received (Chang Declaration, Paper 103, ll 20) .
160.
Several months later, on 09 September 2005, Chang
again called Augustine-Rivas (Chang Declaration, Paper 103,
ll
21).
161.
Apparently Chang and Augustine-Rivas had a
discussion in which (1) Augustine-Rivas is said to have indicated
that the administrative dismissal would not have "generated any
papers" and (2) that administrative dismissals "are ent.ered
directly into the computer at the request of Judge Patel" (Chang
Declaration, Paper 103, ll 21) .
162.
Augustine-Rivas is said to have suggested to Chang
that Chang contact an Anthony Bowser who is said to be Judge
Patel's Hcourtroom deputy clerk" (Chang Declaration, Pa.per 103,
11
22)
163.
Chang tells us that on 09 and 15 September 2005,
she called Bowser and left voice mails, neither of whic!h is said
to have been returned (Chang Declaration, Paper 103, ll 23).
Rowland
164.
Mark D. Rowland, Esq., works for Fish & Neave
Intellectual Property Group of Ropes & Gray LLP (Rowland
Declaration, Paper 108,
1) .
165.
On 11 July 2005, Rowland sent a letter to Judge
Pate1 (Rowland Declaration, Paper 108, ll 4 and Exhibit 1).
166.
The letter, which speaks for itself, requests
Judge Pate1 to assist Rowland in obtaining information about the
dismissal of the civil action (Rowland Declaration, Exhibit 1).
167.
Conspicuously absent from the letter is any
indication that it was served on, or otherwise sent to, counsel
for Carter.
Brustman declaration
168.
Charles R. Brustman is a "managing clerk." in the
Fish & Neave Intellectual Property Law Group of Ropes and Gray
LLP (Brustman Declaration, Paper 102, ll 1).
169.
Brustman tells us that in Polaroid v. K c m , a
civil action in the District of Massachusetts, the court rendered
a decision three and one-half years after conclusion of a trial
(Brustman Declaration, Paper 102, 77 4 & 5) .
170.
The Brustman Declaration is given no weight in
this appeal on the ground that its content, assuming the content
to be true, is irrelevant to any issue in this appeal.
171.
The fact that a district court in Massac:husetts
may have needed three and one-half years to decide a civil action
in that court has nothing to do with why a different ci.vil action
in a different district court has been dismissed.
C.
Discussion
1.
There has been an adiudication on the merits
Applicant maintains that issue preclusion is not appropriate
because there has not been an adjudication on the merits (REQUEST
FOR REHEARING, page 7). We disagree.
The board in Interference 100,775 entered a decisi.on on the
merits holding that applicant did not enable his claimed
apparatus involved in the interference. Judicial review was
sought by civil action under 35 U.S.C. § 146. The civil action
in which judicial review was sought has been dismissed. The time
for appeal of the dismissal has expired. Under 35 U.S.C.
§ 135 (a), once an appeal cannot be taken, the Patent artd
Trademark Office implements the judgment in the interference.
In this case, the board's undisturbed "judgment" is that
applicant was not entitled to the apparatus claims of the
application involved in the interference based on lack of
enablement.
The following is apparent: (1) there has been an
administrative adjudication by the board on the merits, (2) the
adjudication was not disturbed on judicial review and (3) the
administrative adjudication is sufficient to support application
of issue preclusion. See United States v. Utah Construction &
Minins Co., 384 U.S. 394, 421, 86 S.Ct. 1545, 1559-60 (1966).
See also Astoria Federal Savinqs and Loan Assln. v. Solimino, 501
U.S. 104, 107, 111 S.Ct. 2166, 2169 (1991), both cited in our
original decision (Paper 94, page 25) .
Applicant maintains that the Northern District of California
never decided the civil action on the merits. But, applicant
cannot deny that the civil action has been dismissed without
affecting in any way the merits decision entered by the board in
Interference 100,775.
Applicant's principal position seems to be that the civil
action should not have been dismissed. We are in no position,
one way or the other, to (1) overlook the dismissal or
(2) determine, as applicant would seem to want us to do, that the
district court should not have entered the dismissal,
"administrative" or otherwise.
It is curious to us that applicant seems to have heen
somewhat indifferent upon learning of the dismissal. No cogent
explanation has been given as to why action was not tak.en
reasonably soon after the evening of 02 May 2000 to und.0what
applicant calls an administrative dismissal.*
There are two ways to I1get1la district court "to d.o
something": (1) file a complaint asking for relief or (2) file a
motion. Making phone calls years after the fact to court
personnel cannot take the place of an inter partes motion. At
this late date, more than 5 years after learning that the civil
action had been dismissed, a formal motion to nundoll the
dismissal apparently has not been filed with the Northern
District of California or served on counsel for Carter. We
express no views on whether such a motion, if timely filed, would
be or would have been granted or denied. Nor do we know what
Carter would have said about any motion which might have been
Applicant's inaction upon learning of the dismissal of the civil
action should be contrasted with applicant's action in seeking to revive the
parent application upon learning of its abandonment. A notice of abandonment
was issued on 17 August 1983 (Paper 6). Shortly thereafter, on 12 September
1983, applicant appointed new counsel (Paper 7 ) . A petition to revive was
filed on 15 March 1984 (Paper 10) and was granted on 12 April 1984 (Paper 11).
filed. What we do know is that the complaint filed in the civil
action has been dismissed.
We note that applicant represents that numerous attempts
have been made to llcommunicate"
with court personnel about the
dismissal--all in applicant's view without success. Our own
observation is that it is not court personnel's responsibility to
"revive" applicant's civil action. At the end of the clay it was
up to applicant, not court personnel, to file (and serve) an
inter partes motion to have the dismissal set aside an6 applicant
did not file a motion.
We also have been told about a letter sent on 11 July 2005
to Judge Pate1 by Mark D. Rowland. The letter was not served on
any attorney for Carter. Hence, we are not in the least bit
surprised that Mr. Rowland has not heard back from Judge Patel;
judges do not engage in ex parte communications with counsel for
one of the par tie^.^
At the end of the day all the phone calls (whether returned
or not) and letters have not changed the fact that the civil
action stands dismissed.
2.
Equities
Application of issue preclusion is discretionary (Paper 94,
page 27). Applicant maintains that "equity" and "fairnessu
dictate in this case that discretion be exercised to got apply
issue preclusion. A review of facts shows that applicant does
not "have the cleanest of handsu and that application of issue
preclusion in this case is consistent with the equities in this
case.
a.
Defendant Carter, not applicant, filed a motion for summary
judgment in the civil action in September of 1987. Applicant
filed an opposition in October of 1987. According to a:pplicant,
In this respect, attention is directed to comments made by Pisano
to the examiner concerning ex parte communications with a court (Paper 47,
page 2) .
the summary judgment motion filed in 1987 has not been decided.
It is now 2005. One can reasonably conclude that applicant was
not diligent in attempting to have the court decide Carter's
motion for summary judgment. In the mean time, the Carter and
Krumme patent has expired and Krumme never had a chance to have
his reissue application involved in the interference examined on
the merits after termination of the interference.
The summary judgment motion is said to have been related to
"count one" of the complaint. We have assumed that "count one"
deals with the issue decided by the board in Interference
100,775. Applicant has not explained why a decision denying
Carter's motion for summary judgment per se results in a
determination that the board incorrectly decided the
interference. Applicant apparently did not file a cros,s-motion
for summary judgment. Carter's motion could have been denied
without reaching the merits, e.g., because a material fact could
have been in dispute thereby necessitating a trial.
b.
There is something odd about:
(1) an applicant filing a civil action under 35 U.S.C.
§ 146 in 1986 to seek review of a decision that an
apparatus he claimed is not sufficiently
disclosed;
(2) allowing the civil action to languish before the
district court,
(3) finding out in 2000 that the civil action had been
dismissed,
(4)
failing to take appropriate steps (e.g., filing an
inter partes motion) even as late as 2005 to have
the dismissal vacated and
(5) then attempting to secure ex parte a patent to a
method of using an apparatus, where (i) the other
side's patent to the apparatus expired during the
pendency of the civil action and (ii) the other
side can no longer participate.
The patent involved in the interference and civil action has
expired. There is no reliable evidence that applicant attempted
inter partes in any timely manner to call Judge Patel's attention
to an undecided summary judgment motion. By not attencling to the
civil action in a timely manner, applicant has not come to grips
with the fact that the patent involved in the civil action has
expired and that the public would now be prejudiced if we were to
authorize a patent to a method of using an apparatus which has
been held to have been insufficiently disclosed. We believe it
was up to applicant to prosecute the civil action in a more
timely fashion so as not to prejudice the public interest by the
late-issuance of a patent. The board merits decision a.gainst
applicant in the interference, which was not disturbed as a
result of the civil action, provides an adequate discretionary
basis for applying issue preclusion in this case.
Applicant would have us exercise discretion by not applying
issue preclusion and instead to re-decide the same issue which
was decided by the board in Interference 100,775. According to
applicant, there is "new evidenceu which applicant says was "not
available in the '775 interference" and that the evidence "may
very well lead to a different result than in the '775
interferenceu1(REQUEST FOR REHEARING, page 9).
We found in our original decision that all the so-called
"new" flwitnesses"were individuals available at the time
Interference 100,775 was pending. While applicant painting with
a broad brush says those witnesses were "unavailable,"the
evidence suggests otherwise. See Finding 101. The so-called
"new evidence" is no reason, in this case, to decline to apply
issue preclusion. After all, the reason for issue preclusion is
to keep from re-litigating an issue already decided.
D.
Errata
In a paragraph bridging pages 26-27 of our DECISI0:N ON
APPEAL UNDER 35 U.S.C. 5 134 (Paper 94), we state:
While the opinion in Deckler based estoppel
on a board decision, we wish to point out
that Deckler's assignee sought judicial
review by civil action under 35 U.S.C. § 146,
but - - as occurred in the present case - - the
civil action was dismissed on stipulation of
the parties.
That sentence should have read:
While the opinion in Deckler based estoppel
on a board decision, we wish to point out
that Deckler's assignee sought judicial
review by civil action under 35 U.S.C. § 146,
but - - as occurred in the present case - - the
civil action was dismissed.
In Deckler, the civil action was dismissed on stipulation of
the parties; in this case, the civil action appears to have been
"administratively" dismissed.
Footnote 25 in the DECISION (Paper 94, page 27) is not
affected by this errata.
E.
Order
Upon consideration of the REQUEST FOR REHEARING, and for the
reasons given, it is
ORDERED that the REQUEST FOR REHEARING is denied.
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136 (a) (2005).
FURTHER ORDERED t h a t t h e t i m e f o r s e e k i n g j u d i c i a l
r e v i e w i s found i n 3 7 CFR 5 1 . 3 0 4
(2005).
1
MICHAEL R . FLRMING, &ief
A d m i n i s t r a t i v e patent! Judge
G$RY
y.
~ I $ o M , Vice Chief
)
1
j
-
i
r a t i v e P a t e n t Judge
1
~ d m i n i s t r a wP a t e n t Judge
)
)
FREDE . MCKELVEY, s e n i o r
A d m i n i s t r a t i v e P a t e n t Judge
)
)
"".-.-.-Jdmi&t
BOARD OF PATENT
APPEA.LS AND
1NTERFE:RENCES
Appendix 2''
Table of Contents
Application 06/295,929
Rule 60
Application
Preliminary amendment A
Preliminary amendment B
Request for attorneys to withdraw
Rejection
Notice of abandonment
Revocation of power of attorney
Power to inspect
Amendment C
Petition to revive (137(b))
Petition to revive granted
Suspension
Status inquiry
Suspension
Status inquiry
Suspension
Status inquiry
Rejection
Amendment D and petition to suspend
Petition dismissed
Information disclosure statement
Letter of protest (missing)
Interview summary record
Letter
Supplemental information disclosure statement
Rejection
Petition for extension of time
Notice of abandonment
Application 07/117,393
Rule 62
Preliminary amendment E
Preliminary amendment F
Final reject ion
Petition for extension of time
Notice of appeal
Declaration of Isackson (Ex 1-6 missing)
Declaration of Eggers
Associate power of attorney
Amendment G
Revocation of atty/power of attorney
Acceptance of revocation
'O
Appendix 1 appears a t t h e end of our o r i g i n a l opinion (Paper 9 4 ) .
- 17 -
Suspension
Suspension
Suspension
Suspension
Rejection
Response to Office action
Declaration of Pisano
Interview summary
Supplemental response to office action
Final rejection (missing)
Change of address
Final rejection (as remailed)
Notice of appeal
Brief on appeal
Examiner's answer
Power to inspect
Reply brief
Power to inspect
Acknowledgement of reply brief
Request for oral hearing
Status inquiry
Response to status inquiry
Petition to make special
Petition granted
Change of address (via fax)
Order (need for compliance with Rule 192(c)
Change of address (via fax)
Supplemental brief on appeal
Notice of oral hearing
Confirmation of oral hearing
Remand to examiner
Supplemental examiner's answer
Reply to supplemental examiner's answer
Acknowledgement of reply
Letter--suspending appeal
Decision on appeal
Request for rehearing
Decision denying rehearing
Notice of appeal to Federal Circuit
Joint Motion to Remand (filed in Fed Cir)
Federal Circuit mandate
Protest under 37 CFR § 1.291a
Copy Final Rejection (Paper 50)
Declaration of Stutz (see Paper 52)
Declaration of Eggers (see Paper 52)
Declaration of Eggers (see Paper 52)
Isackson Exhibits E,F,G,H and CJR (see I?aper 47)
Exhibits 1-6 of Paper 34
Declaration of O'Neill (see Papers 36, 47 & 52)
Declaration of Macovski (see Papers 36, 47 & 52)
Declaration of Ingle (see Papers 36, 47 & 52)
Declaration of Shaw (see Papers 36 & 4711
Declaration of Miller (see Papers 36, 4;' & 52)
Declaration of Craig (see Papers 36 & 47)
Isackson Exhibits B,C and CSR (see Papers 36 & 52)
Decision on Appeal
Request for Rehearing
Order for Applicant to Brief Additional Matters
Status Inquiry
Acknowledgement of Status Inquiry
Transmittal Letter
Response to Board's order for additional briefing
Express Mail Certificate
Declaration of Charles R. Brustman
Declaration of Chi-Hsin Chang
Declaration of Drago N. Gregov
Declaration of Robert C. Morgan
Declaration of Nicola A. Pisano and exhibit
Declaration of S. Craig Rochester and exlhibits
Declaration of Mark D. Rowland
Decision on Rehearing
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