Appeal No. 95-0423
Application 07/696,859
addressing the question of diligence.
We agree with the examiner that Prywes I establishes
conception of the invention prior to the filing date of Ritch.
Nevertheless, like the examiner, we find the appellant’s
showing of facts to be insufficient to remove Ritch as a
reference. First, appellant’s showing does not establish that
the claimed combination, or shunt, ever actually existed , or 6
that the claimed method was ever performed . Accordingly, no 7
actual reduction to practice of the invention, either prior to
or after the filing date of Ritch, has been established.
Second, as to diligence during the critical period from just
prior to the effective date of the Ritch patent to the filing
of the application, the only relevant showing in this regard
§ 1.131(b), where an applicant is the first to conceive an
invention but the second to reduce it to practice, diligence
must be shown from just prior to the effective date of the
reference to a subsequent reduction to practice or filing of
the application.
6Actual reduction to practice requires at the very least
a showing that the apparatus actually existed. In re
Asahi/American Inc., 68 F.3d 442, 445, 37 USPQ2d 1204, 1206
(Fed. Cir. 1995).
7“A process is reduced to practice when it is
successfully performed.” Corona v. Dovan, 273 U.S. 692, 1928
Comm’r Pats. 253, 262-63 (1928).
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