Appeal No. 1995-4623
Application No. 07/918,588
designated". See the Examiner's Answer, page 4. We disagree.
On this record, the examiner has not established that another inventive entity
conceived the invention of claims 1 through 3 and communicated that invention to
applicants before July 22, 1992, the filing date of the instant application. Nor has the
examiner established that the original oath accompanying this application is incorrect.
In the office action mailed June 1, 1993 (paper no. 8), page 3, the examiner invites
attention to In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). The question arises
whether we have an ambiguity respecting inventorship created by the O'Connor
publication, similar to the ambiguity found to exist in Katz, and, if so, whether this ambiguity
shifts the burden of persuasion to applicants to provide a satisfactory showing which would
lead to a reasonable conclusion that applicants are the joint inventors of the peptides
recited in claims 1 through 3. See In re Katz, 687 F.2d at 455, 215 USPQ at 18, where the
court required a showing above and beyond the original oath accompanying the Katz
patent application. We answer these questions in the negative.
In Katz, the Chiorazzi et al. article was published before applicant's effective filing
date and the examiner's rejection was predicated on 35 U.S.C. § 102(a). Here, the
O'Connor article was published after applicants' filing date and the rejection is
predicated on 35 U.S.C. § 102(f). We shall not pass on the question whether the analysis
set forth in Katz in the context of a rejection under 35 U.S.C. § 102(a) applies
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007