Appeal No. 94-2156
Application 07/888,366
additional evidence which showed that (1) Knaster refused to
sign a declaration that he was not a coinventor, and (2)
Knaster wrote
a letter to the PTO declaring himself to be a coinventor of
the invention claimed.
In this case, we have only an examiner’s speculation
that Lee must be a coinventor of the subject matter claimed in
this application because of the repeated use of the pronoun
“we” in the later published papers which Lee co-authored and
coinventor Raikhel’s reference to “Dr. Lee” in her declaration
(Supplemental Examiner’s Answer, pp. 2-4). However, the
examiner may recall that the PTO was expressly cautioned
against just this type of speculation in In re Katz, 687 F.2d
at 455-56, 215 USPQ at 18 (emphasis added):
[W]e hold that authorship of an article by itself does
not
raise a presumption of inventorship with respect to the
subject matter disclosed in the article. Thus, co-
authors
may not be presumed to be coinventors merely from the
fact
of co-authorship. . . .
. . . [When there was] ambiguity created by the
printed
publication . . . [i]t was incumbent, therefore, on
appellant to provide a satisfactory showing which
would lead to a reasonable conclusion that he is the sole
inventor.
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