Griggs v. Rose

When the examiner has already determined, before declaration, that an involved application claim is unpatentable (here under 35 U.S.C. § 112, first paragraph, for lack of written description) and that determination has not been overcome in ex parte prosecution or reversed on appeal, the Board will not consider an opposing party's preliminary motion under 37 C.F.R. § 1.633(a) for judgment that the claim is unpatentable. Such claims are "dead claims" during the interference even if designated as corresponding to the count, to be carried forward to termination for ex parte action; an opposing party may instead file a protest under 37 C.F.R. § 1.291. No prior precedent directly addressed this issue in the text; the opinion rests on the axiom that an interference cannot be conducted for unpatentable subject matter. For the opposing party (Rose), a § 1.633(a) motion attacking claims the examiner has already found unpatentable is inappropriate and is dismissed unconsidered; the proper vehicle to add to or support the examiner's determination is a § 1.291 protest. For the applicant (Griggs), the claims stay in the interference but dormant: the dispute with the examiner is taken up at the end of the interference if Griggs prevails on priority, and if Griggs loses on priority the claims are unpatentable on priority grounds anyway. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it relies on the Board's own reasoning and the cited PTO rules. LEGAL TEST OR STANDARD: No multi-factor test. The Board reasoned that an interference cannot be conducted for unpatentable subject matter; where the examiner has determined a claim unpatentable and that determination has not been overcome in ex parte prosecution or reversed on appeal, the claim does not belong in the interference except to be carried forward to termination, and cannot be the battleground for or target of patentability attacks that do not involve the other claims. TRIGGERING FACTS: Interference declared with a single count; Griggs application claims 19, 20, 27 and 28 were copied from Rose patent claims 7, 8, 15 and 16 and designated as corresponding to the count; the examiner indicated on Form 850 and in the initial interference memorandum under 37 C.F.R. § 1.609(b) that they were unpatentable under § 112, first paragraph (no written description support); no one moved under 37 C.F.R. § 1.633(c) to redefine the interference; Rose filed only a § 1.633(a) motion on the same ground. KEY QUOTE: "In that sense, they are "dead claims" during the interference even if they have been designated as corresponding to the count." (Paper 12, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If the examiner has already found an opposing party's claim unpatentable before declaration, do not file a 37 C.F.R. § 1.633(a) motion on that ground; file a protest under 37 C.F.R. § 1.291 to supplement the examiner's determination, and use preliminary motions for other relief.