conversation with paralegal specialist Yolunda Townes on December 6, 2000, counsel for Keszler
indicated that no preliminary statement 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 Keszler did not file a preliminary statement, Keszler is restricted to its filing date of October 26,
1995. 37 CFR § 1.629(c)(1). As this date is subsequent to Sasaki’s effective filing date of July 17, 1995,
Sasaki is presumptively the first to invent the subject matter of the count. 37 CFR
§ 1.657(a). Because it did not file a preliminary statement, Keszler is not permitted to 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 Keszler is precluded from proving a date of invention earlier than Sasaki’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 Counts 1 and 2, the only counts in this interference,
is awarded against junior party DOUGLAS A. KESZLER;
FURTHER ORDERED that junior party DOUGLAS A. KESZLER is not entitled to a patent
containing claims 1-18 (corresponding to Count 1) or claims 19-26 (corresponding to Count 2) of Patent
5,684,813, granted November 4, 1997, based on application 08/548,458, filed October 26, 1995;
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