Ex Parte Skulnick - Page 12
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Board of Patent Appeals and Interferences > 2004 > Ex Parte Skulnick - Page 12
Interference No. 105,125
Chaffee v. Skulnick
back of the fender is flat and gets narrower linearly towards the middle from each end. At oral
argument, counsel for the junior party characterized the fender as having an hour glass shape but
wherein the indentation does not go all the way around. Transcript at 8. The photographs do not
show all portions of the boat fender including design features. Thus, even assuming that prior to
February 27, 2001, junior party Thomas J. Chaffee had constructed the boat fender which is the
subject of the photographs submitted, that is not sufficient to establish a prima facie case of
actual reduction to practice of the ornamental design according to the count.
At oral argument, counsel for junior party Chaffee argued that based on the front
elevational view shown in the photographs accompanying the original Rule 608(b) submission
one with ordinary skill in the art would presume that the back of the boat fender is flat, rather
than a "C" or an "X" shape (Transcript at 18). The argument is without support in the original
Rule 608(b) submission. There was no testimony from any technical person in that regard.
Counsel for Chaffee offered no reason at oral argument why the back of the illustrated boat
fender cannot be "C" or "X" shaped, different from the flat-back design of the count.
Actual reduction to practice also cannot be established by the uncorroborated testimony
of the inventor alone. Lacotte v. Thomas, 758 F.2d 611, 613, 225 USPQ 633, 634 (Fed. Cir.
1985). The inventor's testimony must be corroborated by independent evidence. Coope ,
154 F.3d at 1330, 47 USPQ2d at 1903. However, the same problems discussed above regarding
the inventor's testimony also exist with respect to the corroborating testimony of the witnesses
Kenneth R. Gill, Jr. and Timothy J. King. The photographs they referred to also do not reveal
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