2. Preliminary statements and preliminary motions were due January 23, 1997. Paper 2, p. 1.
3. In a paper entered November 5, 1997, junior party Danby moved to extend the time for filing
preliminary statements and motions until March 23, 1998. Paper 5, p 1.
4. The motion was granted by APJ Ronald Smith. Paper 9, p. 1.
5. No preliminary statement or preliminary motions are of record in the interference file.
6. In a telephone conversation with paralegal specialist Yolunda Townes on April 9, 1999, counsel
for Danby indicated that no preliminary statement or motions were or would be filed.
Discussion
Section 1.629(c) of 37 CFR provides:
1.629 Effect of preliminary statement.
* * * * *
(c) If a party does not file a preliminary statement, the party:
(1) Shall be restricted to the party's effective filing date and
(2) Will not be permitted to prove that:
(i) The party made the invention prior to the party's filing
date or
(ii) Any opponent derived the invention from the party.
Since Danby did not file a preliminary statement, Danby is restricted to its filing date of May 19, 1987. 37
CFR 1.629(c). As this date is subsequent to Yamazaki’s effective filing date of March 23, 1987,
Yamazaki is presumbtively the first to invent the subject matter of the count. 37 CFR 1.657(a). Because
it did not file a preliminary statement, Danby is not permitted prove that it made the invention prior to its
filing date (37 CFR § 1.629(c)(2)(i)) or to present a case-in-chief (37 CFR § 1.651(c)(2)). Since Danby
filed no preliminary motions and is precluded from proving a date of invention earlier than Yamazaki’s filing
date, under the particular facts of this case, the issuance of an order to show cause (37 CFR §1.640(d)(2))
is unnecessary and entry of a final judgment at this time is appropriate. Accordingly, it is
ORDERED that judgment on priority as to Count 1, the sole count in this interference, is awarded
against junior party GORDON T. DANBY, CHARLES E. BRUKL and LAWRENCE A. MINKOFF;
FURTHER ORDERED that judgment on priority as to Count 1 is awarded in favor of senior party
SHUNPEI YAMAZAKI;
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