Interference No. 104,833
Page No. 2
argument, the parties settled the interference, whereby the party Hazes assigned its patent to Bries
real party in interest, Minnesota Mining and Manufacturing Company (3M)'.
Unless good cause is shown, an interference shall not be continued between an
application and a patent owned by the same party. 37 CFR § 1.602(a). Thus, 3M was ordered to
show cause why judgment should not be entered against the junior party Hazes (Paper 108). 3M
responded by requesting a decision on the preliminary motions filed to make a proper
determination of priority vis4-vis Hazes and Bries (Papers 108 and 110). 3M's request was
granted (Paper 110 at 3).
Oral argument on preliminary motions was held on 5 August 2003. As common
assignee, only 3M had counsel present at the hearing. During oral argument, counsel for 3M
requested that there emanate from this decision a precedent for deciding certain preliminary
motions at the request of a common assignee. That is, counsel requested that the board undertake
deciding "close" issues in order to assist a common assignee in determining priority (Paper 114
at 5). 3M's request for a precedential decision is denied.
Ordinarily, despite having filed preliminary motions, when a common assignee emerges,
a decision on preliminary motions will not be decided. Here, counsel for 3M, during a
conference call with the administrative patent judge (APJ) designated to handle the interference,
explained to the APJ that 3M had a difficult task in deciding priority between Bries and Hazes,
since it was a "close call" as to what the count should be, whether Bries' claims were patentable,
and whether Hazes should be accorded benefit of its German application. Counsel for 3M
' According to PTO records, the assignment was executed on 12 June 2003, and recorded
on I I July 2003.
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