Appeal No. 94-2156
Application 07/888,366
. . . . .
In the declaration, appellant provides the
explanation
that the co-authors of the publication . . . “were
students
working under the direction and supervision of the
inventor . . . .” This statement . . . provides a clear
alternative
conclusion . . . . On the record here, the board should
not have engaged in further speculation as to whether
appellant’s view was shared by . . . [the] co-authors but
rather should have accepted that . . . [the co-authors]
were
acting in the capacity indicated, that is, students
working
under the direction and supervision of appellant. From
such
a relationship, joint inventorship cannot be inferred in
the
face of sworn statements to the contrary.
In light of Raikhel’s declaration, the examiner erred as a
matter of law in presuming that the co-authorship of the
Lee I and Lee II publications raises the presumption that
Lee is a coinventor of the subject matter appellants claimed.
Accordingly, we reverse the examiner’s rejections of Claim 3
under 35 U.S.C. § 102(f) and Claim 4 under 35 U.S.C. § 103 in
view of subject matter the examiner deemed to be prior art
under 35 U.S.C. § 102(f).
3. Other Issues
Although the court in In re Deuel, 51 F.3d at 1560,
34 USPQ2d at 1216, reversed the examiner’s rejection of claims
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