legislative history which would permit the board to properly
exercise discretion by declining to consider a patentability
issue inter partes--even if "fairly raised."
A principal problem with interference practice prior to the
1984 amendment to § 135(a) was that the then Board of Patent
Interferences did not have jurisdiction over patentability based
on the prior art. Glass v. DeRoo, 239 F.2d 402, 112 USPQ 62
(CCPA 1956) (patentability over prior art not ancillary to
priority). Patentability could be raised in a pre-1985
interference. 37 CFR § 1.231(a)(1) (1984). An examiner (not the
board) would determine patentability. 37 CFR § 1.231(d) (1984).
If the examiner determined that an applicant's claims were
unpatentable, the interference was "dissolved" and ex parte
prosecution of the application was resumed. If at some later
date, the applicant was able to establish ex parte that its
claims were patentable, the interference was "reinstated." Under
these circumstances, the opponent was held in limbo pending
outcome of ex parte proceedings in which it had no right to
participate, or for that matter to even monitor. See 1984
U.S.C.C.A.N. 5827, 5836-37 and Sze v. Bloch, 458 F.2d 137, 173
USPQ 498 (CCPA 1972), and Switzer v. Sockman, 333 F.2d 935, 142
USPQ 226 (CCPA 1964), cited therein. Hence, one purpose of the
amendments to § 135(a) was to avoid ex parte consideration of a
party's application "mid-way" through an interference while
leaving the opponent in the dark and subject to future
interference proceedings at some unknown time. Thus, a patentee
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