Appeal No. 1997-1508 8
Application No. 08/489,822
all named inventors of an application invented the subject matter of
the claim or claims under rejection. For example, one of two joint
inventors is accepted where it is shown that one of the joint
inventors is the sole inventor of the claim or claims under rejection.
A party qualified under 37 § CFR 1.42, 1.43, or 1.47 in situations
where some or all of the inventors are not available or not capable of
joining in the filing of the application.
(C) The assignee or other party in interest when it is not
possible to produce the affidavit or declaration of the inventor. Ex
parte Foster, 1903 C.D. 213, 105O.G. 261 (Comm’r Pat. 1903).
Affidavits or declarations to overcome a rejection of a claim or claims
must be made by the inventor or inventors of the subject matter of the
rejected claim(s), a party qualified under 37 CFR § 1.42, 1.43, or
1.47, or the assignee or other party in interest when it is not possible
to produce the affidavit or declaration of the inventor(s). Thus, where
all of the named inventors of a pending application are not inventors of
every claim of the application, any affidavit under 37 CFR § 1.131
could be signed by only the inventor(s) of the subject matter of the
rejected claims. Further, where it is shown that a joint inventor is
deceased, refuses to sign, or is otherwise unavailable, the signatures of
the remaining joint inventors are sufficient. However, the affidavit or
declaration, even though signed by fewer than all the joint inventors,
must show completion of the invention by all of the joint inventors of
the subject matter of the claim(s) under rejection. In re Carlson, 79
F.2d 900, 902, 27 USPQ 400, 402 (CCPA 1935).
On the record before us, the affidavit under Section 131 is signed by only one of
the inventors of record, i.e., Ranjan C. Patel. On the record before us, it has not been
shown that Ranjan C. Patel is the sole inventor of the subject matter of claims 16 through
18. Accordingly, on this record, the appellants have not complied with the requirements
of Section 131 and we sustain the rejection of the examiner.
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