Appeal No. 2006-1658
Application No. 09/801,617
application is processed from final draft to executed patent application
filed in the U.S. Patent Office.
It has been held that where conception occurs prior to the date of the reference,
but reduction to practice is afterward, it is not enough merely to allege that applicant or
patent owner had been diligent. Ex parte Hunter, 1889 C.D. 218, 49 O.G. 733 (Comm’r
Pat. 1889). Rather, applicant must show evidence of facts establishing diligence. The
critical period in which diligence must be shown begins just prior to the effective date of
the reference or activity and ends with the date of a reduction to practice, either actual or
constructive (i.e., filing a United States patent application). See Ex parte Merz,
75 USPQ 296 (Bd. App. 1947). An applicant must account for the entire period during
which diligence is required. Gould v. Schawlow, 363 F.2d 908, 919, 150 USPQ 634,
643 (CCPA 1966) (Merely stating that there were no weeks or months that the invention
was not worked on is not enough.); In re Harry, 333 F.2d 920, 923, 142 USPQ 164,
166 (CCPA 1964) (statement that the subject matter “was diligently reduced to practice”
is not a showing but a mere pleading). Kendall v. Searles, 173 F.2d 986, 993, 81 USPQ
363, 369 (CCPA 1949) (Diligence requires that applicants must be specific as to dates
and facts.) A 2-day period lacking activity has been held to be fatal. In re Mulder, 716
F.2d 1542, 1545, 219 USPQ 189, 193 (Fed. Cir. 1983).
Upon our review of the record before us, we find that the character and the weight
of the evidence submitted is not sufficient to substantiate Appellants’ allegation of due
diligence from prior to the February 22, 2001 filing date of the Weiss reference to the
March 08, 2001 filing date of Appellants’ claimed invention.
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