Chester, et al., Appellants, v. Dave, et al., Appellees, 848 F.2d 1244 (Fed. Cir. 1988)

DECISION

This appeal is from the United States Patent and Trademark Office Board of Patent Appeals and Interferences (board), Interference No. 101,174, awarding priority of invention to the senior party, Dilip Dave and Antony H.P. Hall (Dave). We affirm.

OPINION

The interference involved in this appeal was between Dave, and Arthur W. Chester and Yung F. Chu (Chester). The board dismissed as untimely under 37 C.F.R. Sec. 1.231, Chester's motion for "summary judgment" which sought to raise the issue of Dave's right to make the counts. The board then held that Chester failed to establish either actual reduction to practice or conception coupled with diligence to constructive reduction to practice during the critical period.

It is well settled that the board need not consider ancillary matters not raised during the time set for motions under Sec. 1.231. Magdo v. Kooi, 699 F.2d 1325, 1329-31, 216 USPQ 1033, 1037-38 (Fed. Cir. 1983). We see no error in the board's conclusion that Chester's attempt to raise these matters was untimely. Nor has Chester shown that the board abused its discretion by rejecting Chester's assertions of "manifest injustice" under 37 C.F.R. Sec. 1.258, and thus we affirm that part of the board's opinion as well. See Department of Energy v. Daugherty, 687 F.2d 438, 446, 215 USPQ 4, 11 (CCPA 1982).

Chester's assertion that Martin v. Mayer, 823 F.2d 500, 3 USPQ 2d 1333 (Fed. Cir. 1987) somehow affects this case is misplaced. In Martin, the junior party correctly raised the issue of right to make the count in a timely fashion. The effect of Martin on burdens of proof is, therefore, of no assistance to Chester.

The board found that there was insufficient evidence demonstrating that recovery actually occurred. The board also rejected Chester's arguments that its actions were reasonable during the critical period. Chester has pointed to nothing in the record which leads us to conclude these findings are clearly erroneous. Denen v. Buss, 801 F.2d 385, 386, 231 USPQ 159, 160 (Fed. Cir. 1986). Chester had the burden of proof, and the board found that it failed to sustain its burden. We therefore agree with the board's conclusion on priority.

Chester's evidentiary argument concerning the board's reliance on the testimony of Dr. Young to sustain its actions is without merit.