Interference No. 103,272
8
23) , which are included in the record at HR 658 to 607. Two of these patents (HX 22 and
23) are incorporated by reference in the Heuschen application at page 4, lines 32 and 33.
We agree with the party Heuschen that it need not have disclosed in its
application the particular procedures for making the polycarbonate, since to do so would
have made its specification into a production specification and it is settled that an inventor
is not required to supply a "production" specification. Wahl Instruments, Inc. v. Acvious
Inc., 950 F.2d 1575, 1579, 21 USPQ2d 1123, 1127 (Fed. Cir. 1991).
We note that the party Okamoto relies upon the testimony of Dr. Cooper to
the effect that pH equilibration is company proprietary information and trade secret. HR
97. However, it is clear from Dr. Cooper’s testimony that he did not appreciate the legal
nuances of the expressions, especially where he testified that “it [pH equilibration] was not
patented; it was just a trade secret.” However, Dr. Heuschen’s testimony makes clear that
pH equilibration is not a General Electric trade secret. HR 441. Certainly, we consider Dr.
Heuschen’s testimony vis-à-vis Dr. Cooper’s testimony more accurately reflects the facts,
8
These exhibits are subject of the party Okamoto’s motion to suppress. Essentially, the
motion at pages 6 and 7 urges that these patents should be suppressed because no testimony
was taken with respect to them and that these patents constitute inadmissible hearsay.
However, the purpose of 37 CFR § 1.682 is to introduce printed publications and patents into
evidence without the necessity for taking testimony. See Dreikorn v. Barlow, 214 USPQ 632,
634 (Comm'r. Pats.& Trademarks 1981); Bey v. Kollonitsch, 215 USPQ 454, 456 (Bd. Pat. Int.
1981). By filing the notice, the party Heuschen is urging that the documents speak for
themselves and the party does not intend to take any testimony pertaining thereto. Bey v.
Kollonitsch, id. Further, these patents are not considered hearsay since they are not relied upon
for the truth of the matter but rather for the knowledge of the matter in the prior art. Accordingly,
the motion is denied insofar as it seeks to suppress these patents.
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