Appeal No. 95-0423
Application 07/696,859
so, and no reason for so concluding is apparent to us.
We first take up for consideration the question of
whether the Ritch patent should be withdrawn as a reference in
light of appellant’s declaration under 37 CFR § 1.131 (Prywes
I). For completeness sake, we also consider the declaration4
submitted in response to the examiner’s rejection under 35
U.S.C. § 102(c) (Prywes II) to the extent it relates to this
question.
Prywes I states on page 1 that it is submitted “to
establish completion of the invention in this application in
the United States at a date prior to Dec. 20, 1989, which is
the effective date of US Patent 4,968,296 [to Ritch], which is
voluntarily cited by applicant in the attached information
4A review of the record reveals that at one point during
prosecution, the examiner considered the Prywes I declaration
to be “ineffective to overcome the Ritch et al reference as it
pertains to claim 1” because appellant was claiming therein
the same invention as Ritch, but that said declaration “[was]
sufficient to overcome the Ritch et al reference as it
pertains to [the remaining] claims . . . .” Office Action
mailed September 30, 1992 (Paper No. 7), pages 2 and 3.
Subsequently, the examiner reversed his position with respect
to the appellant’s showing of facts, found the Prywes I
declaration to be insufficient to establish diligence, and
rejected a variety of claims under 35 U.S.C. § 102(e) and 35
U.S.C. § 103 based on the Ritch patent. See the Office Action
mailed May 20, 1993 (Paper No. 11).
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