Interference No. 104,403
Rosenthal’s claims 1-8 and 11 corresponding to the count
are unpatentable under 35 U.S.C. Sec. 103 over the
combined disclosures of U.S. Patent No. 4,451,727
(Rosenthal) and U.S. Patent No. 5,303,525 (Magee) for all
claims and the additional disclosures of U.S. Patent No.
4.028,109 (Lamberts et al) with respect to claims 1-2, U.S.
Patent No. 3,565,733 (Leach) with respect to claims 3-5,
U.S. Patent No. 4,920,039(Fotland et al) with respect to
claims 4 and 11 and U.S. Patent 4,993,790 (Vick) with
respect to claims 6-8).
The senior party relies on the Magee ‘525 to provide the
motivation to combine the teachings of the various references in
addressing obviousness of the claims. As such, the Magee ‘525
reference forms a part of the references relied on in support of the
senior party’s obviousness argument with regard to each claim.
In a Decision on Preliminary Motions (Paper No. 111) a panel of
the board stated on pages 36 to 37:
Rosenthal argues that the Magee ‘525 reference cannot
be used against it, since Rosenthal alleges a date prior to
the effective filing date of Magee ‘525 in its preliminary
statement (Paper 75 at 7). . . . According to precedential
opinion LaVeen v. Edwards, 57 USPQ2d 1416, 1420
(BPAI 2000), an opponent has two choices when
responding to a 35 U.S.C. §102 (e) reference. A first
choice will be for the opponent to call attention to its
preliminary statement and ask that a decision on the
preliminary motion be deferred to the priority phase of the
interference. A second choice is for the opponent to
present proofs under 37 CFR §1.131 together with its
opposition. In effect, Rosenthal has asked for the first
choice in its opposition in this interference.
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