Appeal No. 95-0423
Application 07/696,859
Appellant maintains that the examiner’s inference is misplaced
and that the examiner appears to misapprehend the correct
requirement for abandonment under 35 U.S.C. § 102(c).
The appellant’s position is well taken. As stated in Ex
parte Dunne, 20 USPQ2d at 1480 (BPAI 1991):
Actual abandonment under 35 U.S.C. § 102(c)
requires that the inventor intend to abandon the
invention . . . . Such intent to abandon an
invention will not be imputed, and every reasonable
doubt should be resolved in favor of the inventor. .
. . Delay in filing alone is not a sufficient basis
from which to infer the requisite intent to abandon
under 35 U.S.C.
§ 102(c).
In the present instance, it is clear that the examiner
has failed to make out a prima facie case of abandonment
within the meaning of 35 U.S.C. § 102(c), particularly when,
as set forth in Dunne, every reasonable doubt is to be
resolved in favor of the inventor.
The 35 U.S.C. § 102(e) and 35 U.S.C. § 103 rejections
based on Ritch ‘296
At the outset, we note appellant’s statement on page 10
of the brief that “when the rejection under 35 U.S.C. § 102(c)
is withdrawn, Ritch ‘296 no longer becomes a reference under
35 U.S.C. § 102(e).” Appellant has not explained why this is
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