Appeal No. 2004-0250 Page 5
Application No. 09/226,412
Discussion
Jensen has been applied under 35 U.S.C. § 102(e). The Jensen patent is based
on an application filed on January 6, 1999, and claims benefit of Provisional Application
No. 60/070752 filed January 8, 1998. Appellants have not contested that the claims of
Jensen are entitled to the earlier filing date of March 27, 1997 of Provisional Application
No. 60/041648. Indeed, their argument on appeal, i.e., the declarations filed under 37
CFR § 1.1313 are effective to remove the rejection premised upon Jensen, allege a
conception date prior to March 27, 1997. See, e.g., Declaration II, para. 3.4 The
examiner has concluded:
The Jensen ‘028 reference is a U.S. patent or U.S. patent application
publication of a pending or patented application that claims the rejected
invention. An affidavit or declaration is inappropriate under 37 CFR §
1.131(a) when the reference is claiming the same patentable invention,
see MPEP § 2306. If the reference and this application are not commonly
owned, the reference can only be overcome by establishing priority of
invention through interference proceedings. See MPEP Chapter 2300 for
information on initiating interference proceedings.
Examiner’s Answer, paragraph bridging pages 4 and 5.
In response, appellants argue that an interference cannot be declared between
the present application and Jensen since no interference-in-fact exists between
3 There are three declarations under 37 CFR § 1.131 of record. The first
was received August 17, 2000 (Paper No. 11) (Declaration I), the second received
January 18, 2002 (Paper No. 21) (Declaration II), and the third received June 20, 2002
(Paper No. 24) (Declaration III).
4 We note that the “Protocol Summary for Study Design Approval Committee”
attached to Declaration II includes the heading “Study Design Approval Date: March 18,
1997,” which date is prior to the March 20, 1997 date of the Jensen priority claim under
35 U.S.C. § 119.
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