Ex Parte Broker et al - Page 3
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The threshold issue is whether Blair is antedated by Appellants'
affidavit under 37 C.F.R. § 1.131 (Rule 131). The affidavit was submitted
on July 20, 2004, and has been entered.2
The Examiner states that sufficiency of the affidavit is a petitionable
matter (Answer 2, 6). However, the sufficiency of a Rule 131 affidavit or
declaration is clearly within the jurisdiction of the Board because it affects a
rejection of the claims. See In re DeBaun, 687 F.2d 459, 214 USPQ 933
(CCPA 1982) (reviewing Board decision involving Rule 131 declaration).
37 C.F.R. § 131 provides that an applicant may establish invention of
the claimed subject matter before the effective date of the reference and
antedate the reference. The tests are stated in § 1.131(b):
The showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
That is, there are three ways in which an applicant can antedate a reference:
(1) actual reduction to practice of the invention prior to the effective date of
the reference; or (2) conception of the invention prior to the effective date of
2 The Evidence Appendix in the Brief lists the affidavit, but does not
include a "statement setting forth where in the record that evidence was
entered in the record by the examiner" as required by 37 C.F.R.
§ 41.37(c)(1)(ix). We will overlook this informality.
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Last modified: November 3, 2007