Fetter, Appellant, v. Tschunt, Appellee, v. Tschunt, Appellee, 852 F.2d 1292 (Fed. Cir. 1988)

Richard W. Fetter (Fetter) appeals from that portion of the decision of the United States Patent and Trademark Office (PTO), Board of Patent Appeals and Interferences (Board) awarding priority of Count 6 to Edgar Tschunt (Tschunt) in Interference No. 101,228. We vacate and remand for further proceedings.

OPINION

This interference is between Fetter's reissue application Serial No. 459,254 and both Tschunt's United States Letters of Patent 4,347,624 ('624) and Tschunt's reissue application Serial No. 646,168 which is based on the '624 patent. The Board awarded priority to Fetter on Counts 1-4 and to Tschunt on Count 6. Fetter v. Tschunt, Interference No. 101,228, slip op. at 11 (Bd.Pat.App.Int. Feb. 26, 1987). The Board first declared an interference on May 3, 1984. Fetter, slip op. at 4. Therefore the old rules of practice govern. See generally 49 Fed.Reg. 48,416 (1984).

This appeal is limited to the award of priority with regard to Count 6 which was not original to the proceeding but added on Tschunt's motion. Fetter, slip op. at 4. Fetter unsuccessfully argued before the Board that Tschunt should not be allowed to add Count 6 because this was an interference between applications, and Count 6 was not shown to be patentably distinct from existing Counts 1-4. The Board rejected Fetter's position indicating that Tschunt did not have to prove this as Count 6 was presumed to be patentably distinct because it was derived from the '624 patent. Fetter, slip op. at 8. On this point the Board was clearly erroneous.

The Board's decision clearly states and the parties do not dispute that Count 6 was based on Tschunt's reissue application Serial No. 646,168 and that Counts 1-4 were based on Tschunt's '624 patent. Fetter, slip op. at 4. Counts derived from the claims of a reissue application carry no presumption that they are patentably distinct. Cf. 35 U.S.C. § 251 p 3 (1982) ("provisions of this title relating to applications for patent shall be applicable to applications for reissue...."); In re Sneed, 710 F.2d 1544, 1550 n. 4, 218 USPQ 385, 388 n. 4 (Fed. Cir. 1983) (reissue application enjoys no presumption of validity); In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-33 (CCPA 1973) (provisions applicable to applications also apply to reissue applications), cert. denied, 416 U.S. 935 (1974).

With regard to Count 6, therefore, we have an interference between two applications. The law is clear: Tschunt may not add this Count unless (1) Tschunt makes a de minimis showing that Count 6 is patentably distinct from the existing Counts 1-4, Milton v. Love, 190 USPQ 319, 320 (Dec.Comm'r Pat.1975), and (2) the PTO concludes that Count 6 is in fact patentably distinct. See Nelson v. Drabek, 212 USPQ 98, 99 (Dec.Comm'r Pat.1979) (quoting Manual of Patent Examining Procedure (MPEP) Sec. 1105.03 (Rev. 56, July 1978) (stating PTO authority to add Count to interference between applications, only if PTO finds Count could properly issue in separate patent)); see also Becker v. Patrick, 47 USPQ 314, 315 (Dec.Comm'r Pat.1940).

Because the Board made an error in concluding that Count 6 was patentably distinct because the Count derived from an existing patent when in fact it derived from Tschunt's reissue application, the Board's decision regarding Count 6 is vacated and remanded to allow the PTO to determine properly whether Count 6 is patentably distinct from Counts 1-4.

COSTS

Both parties shall bear their own costs.