ONDEYKA et al. V. SHELLEY et al. - Page 2




                        Ondeyka notes that their patent (U.S. Patent No. 5,091,389) expired on February                                  
                        25, 1996, due to non-payment of maintenance fees.                                                                
                (Ondeyka List of Intended Preliminary Motions, Paper No. 13, p. 3 and 35 U.S.C. § 41(b)).  At                            
                the time the interference was declared, the Board was unaware that Ondeyka’s patent had                                  
                expired.                                                                                                                 


                        B.      Discussion                                                                                               
                        The patent interference statute, 35 U.S.C. § 135(a) does not authorize an interference                           
                between an expired patent and a pending application.  Specifically, 35 U.S.C. § 135(a) provides                          
                in part:                                                                                                                 
                        Whenever an application is made for a patent which, in the opinion of the                                        
                        Director, would interfere with any pending application, or with any unexpired                                    
                        patent, an interference may be declared and the Director shall give  notice of such                              
                        declaration to the applicants, or applicants and patentee, as the case may be.                                   
                (Emphasis added).  As the Ondeyka patent had expired as of the date the interference was                                 
                declared, the Board lacks subject matter jurisdiction over the interference.  Petrie v. Welsh, 21                        
                USPQ2d 2012 (BPAI 1991); Waterman v. Birbaum, 53 USPQ 2024 (BPAI (ITS) 2000).                                            
                        While recognizing that its patent has expired, Ondeyka seeks to file the following                               
                preliminary motions: (1) One or more motions under 37 CFR § 1.633(a) on the grounds that                                 
                Shelly’s claims are unpatentable; (2) a motion under 37 CFR § 1.633(g) attacking the priority                            
                benefit accorded to Shelly’s claims; and (3) a motion under 37 CFR § 1.635 authorizing full                              
                third-party participation by Ondeyka in the examination of Shelley’s U.S. application or any                             
                continuing application thereof.  (Paper No. 13, pages 2-3).  Moreover, Ondeyka states:                                   
                        In declining to pay the required maintenance fee for U.S. Patent No. 5,091,389, Ondeyka                          

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