Appeal No. 97-2481
Application No. 08/480,964
which are indefinite normally should not be considered. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Nevertheless, in the interest of avoiding piecemeal appellate
review, we have considered the examiner’s rejections on the
merits, assuming that the claims would be unpatentable over
prior art which corresponds to that disclosed in appellant’s
Fig 2. Note, however, the rejection under § 112, first
paragraph, infra.
Rejection (1): 35 U.S.C. 102(f)
This rejection is based on declarations by Mr. Ponesmith and
by Stanley Wayne Olson (the appellant). A declaration by each
declarant was filed in parent application 07/968,694 on April 28,
1993, and an additional declaration by each was filed in parent
application 08/053,486 on June 6, 1994. 2 It appears to be the
examiner’s position that a rejection under § 102(f)is proper
because the declarations show that Mr. Ponesmith conceived the
invention on October 16, 1990, prior to conception by Mr. Olson.
We will not sustain this rejection. As held in OddzOn
Products Inc. v. Just Toys Inc. , 122 F.3d 1396, 1401, 43 USPQ2d
1641, 1644 (Fed. Cir. 1997):
Section 102(f) provides that a person
shall be entitled to a patent unless "he did
2 Copies of these four declarations were filed in the
present application on September 11, 1995.
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