Appeal No. 94-2232
Application 07/888,367
[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.
. . . . .
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
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