Appeal No. 1996-1552
Application 08/241,976
Brief, page 7. We further note our agreement with appellant (Brief, page 8) and the examiner (Answer,
page 6) that the declarations of Mr. Root and of Mr. Gray are not necessary to a determination of due
diligence in this case since these declarations pertain to acts occurring outside of the critical period, and
that accordingly only the declaration of Mr. McDonnell is pertinent to showing diligence during the
critical period (Brief, page 9; Answer, page 6). Thus, the sole issue on appeal before us is whether or
not the declaration of Mr. McDonnell demonstrates due diligence during the critical period of August
22, 1991, through July 30, 1992.
Under 37 CFR § 131(b), appellant is required to demonstrate "due diligence" from prior to the
effective date of the reference(s) to the filing of the application. See 37 CFR § 1.131(b) (1995). We
note that "reasonable diligence is all that is required of the attorney" who in this case was Mr.
McDonnell, and that diligence is to be determined by the ‘rule of reason’ based on the particular facts4
of each case. Bey v. Kollonitsch, 806 F.2d 1024, 1028 n.9, 231 USPQ 967, 970 n.9 (Fed. Cir.
1986); Gould v. Schawlow and Townes, 363 F.2d 908, 921, 150 USPQ 634, 645 (CCPA
1966)("the presence or absence of reasonable diligence must necessarily be determined by the
evidence adduced in each case").
In reaching our conclusion on the issue raised in this appeal, we have carefully considered Mr.
4 Bey v. Kollonitsch, 806 F.2d 1024, 1028, 231 USPQ 967, 970 (Fed. Cir. 1986)(emphasis in original). We note
that although relevant case law discusses diligence under rule 131 both as "due diligence" and as "reasonable
diligence," "the distinction between ‘due diligence’ and ‘reasonable diligence’ is at best a question of semantics."
Gould v. Schawlow and Townes, 363 F.2d 908, 921 n.11, 150 USPQ 634, 645 n. 11 (CCPA 1966).
4
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