The U.S. Court of Appeals for the Federal Circuit has held
that the U.S. Patent and Trademark Office (USPTO) Board of Appeals has the
authority to terminate an interference without resolving issues of
patentability or priority. Berman v. Housey, Case No. 01-1311 (Fed. Cir.
May 29, 2002).
Berman filed an amendment in a pending application,
requesting that an interference be declared with a pending patent application
of Housey (later issued as a patent, Housey III). The examiner determined that
a claim of the Berman application interfered with claims of Housey III and with
claims of Housey I and II (two earlier issued patents). Soon after the
interference was declared, Housey filed a preliminary motion to terminate the
interference under 35 U.S.C. ß135(b), asserting that Berman did not file an
interfering claim within one year of the issuance of Housey I or II. Berman
opposed the motion, claiming that one of his originally filed claims was
directed to substantially the same subject matter as the count. Berman also
filed a motion for judgment that all claims of Housey I-III were invalid based
on prior art.
The Board held that the originally filed claim of Berman was not
directed to the same or substantially the subject matter as claimed in Housey I
and II, that Berman did not present an interfering claim within one year of the
issuance of Housey I or II and that under ß135(b), Berman was now barred from
doing so. The Board terminated the interference, entered judgment for Housey
and dismissed Berman's patentability motion as moot.
On appeal, Berman argued that the Board erred in failing to
consider Berman's patentability motion, urging that the Board was required to resolve
all issues of patentability and priority. Berman relied on a line of prior
Federal Circuit decisions, including Perkins v. Kwon, and on 35 U.S.C. ß6 that states that the Board "shall
determine priority and patentability of invention in interferences declared
The Federal Circuit observed that a ß135(b) determination is
a threshold issue that should be addressed by the Board before proceeding on
the merits of an interference, and held that once the Board determines that
there is a ß135(b)
bar, the Board may refuse to address other issues that have been raised (e.g.,