Appeal 2007-2241
Application 09/768,990
1 show prior reduction to practice, conception, and diligence. Appellant then
2 filed a Notice of Appeal (filed Feb. 2, 2006) accompanied by a Pre-Appeal
3 Brief Request for Review (filed Feb. 2, 2006), which included this passage:
4 The claims have been finally rejected under 35 USC 103(a) as
5 being unpatentable over three references, one of which Applicant
6 contends is not prior art. In response to the final Office Action,
7 Applicant filed an affidavit under 37 CFR 1.131 and provided an
8 internal company invention disclosure form as evidence of an early
9 internal disclosure of Applicant's invention. Examiner's Advisory
10 Action of 12/22/05 misstates the period of time between the priority
11 date of Applicant's application and the priority date of the relied-upon
12 reference. Examiner's Advisory Action of 12/22/05 further misstates
13 the requirements regarding diligence. Examiner's Advisory Action of
14 12/22/05 is missing an explanation of a deficiency in the showing of
15 the conception of Applicant's invention. Examiner's Advisory Action
16 of 12/22/05 is further missing an explanation of the lack of showing of
17 the alleged reduction to practice.
18 Pre-Appeal Brief Request for Review, p. 1. A Pre-Appeal Conference was
19 held and the panel determined, without further comment, that the rejection of
20 claims 1-6 and 9-13 should proceed to the Board. The panel did not provide
21 further explanation of the deficiencies of the 131 affidavit as had been
22 requested by Appellant in the Pre-Appeal Brief Request for Review (see
23 passage reproduced above). See the Notice of Panel Decision from Pre-
24 Appeal Brief Review, mailed Feb. 17, 2006. Appellant then filed the Appeal
25 Brief (filed May 9, 2006; a prior-filed Appeal Brief was determined to be
26 defective) devoted entirely to reasons why Appellant believed the 131
27 affidavit was sufficient to show prior invention. Then, for the first time, in
28 the subsequent Examiner’s Answer (mailed Jun. 14, 2006), a full
29 explanation as to why the 131 affidavit fails to evidence prior invention was
30 provided. Pp. 11-15.
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