41 0 0
We enterjudgment of unpatentability against Dodge, rather than make a recommendation to
the examiner under 37 CFR § 1.659(c). In light of Dodge's concession of unpatentability, we can see
no purpose in merely recommending that the claims be rejected when the case returns to the
examiner. However, our judgment is without prejudice to Dodge submitting amended claims and
presenting evidence and argument asserting the amended claims are patentably distinct from the prior
art when the application returns to the jurisdiction of the examiner.'
Underthe particular circumstances ofthis case, we exercise our discretion and decline to enter
ajudgment on priority against Mosley, notwithstanding Mosley's failure to serve evidence on priority
or derivation. Priority and derivation are determined based on a count representing a patentable
invention claimed by each party. It is fimdamental that the count must be patentable over the prior
art. Due to the unpatentability of each party's claims, on the record before us, there is no basis for
formulating a count directed to patentable subject matter. Without a proper count, there simply
cannot be any priority determination. To award ajudgment on priority for failure of Mosley to serve
a priority case would, under the circumstances of this case, exhort form over substance.
JUDGMENT
it is
ORDERED that judgment as to the subject matter of Count 2 (Paper 90) is awarded against
the junior party ELLEN MOSLEY, RAYMOND K. WHITBY and VERA OWEN;
FURTHER ORDERED thatjunior party, ELLEN MOSLEY, RAYMOND K. WHITBY and
VERA OWEN is not entitled to a patent containing claims I -10 (corresponding to Count 2) of Patent
5,752,945;
FURTHER ORDERED thatjudgment as to the subject matter of Count 2, is awarded against
the senior party RICHARD N. DODGE, 11, CLIFFORD J. ELLIS, CONNIE L. HETZLER, ERIC
S. KEPNER, SYLVIA B. LITTLE, LAWRENCE H. SAWYER and CANDACE D.
KRAUTKRAMER;
FURTHER ORDERED that senior party, RICHARD N. DODGE, 11, CLIFFORD J. ELLIS,
CONNIE L. HETZLER, ERIC S. KEPNER, SYLVIA B. LITTLE, LAWRENCE H. SAWYER and
3 Our statement should not be construed as an order to the examiner to allow amendment of the
claims at this late stage of the prosecution. Whether further amendment shall be allowed in Dodge's application is
left to the sound discretion of the examiner.
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