Appeal No. 97-2481
Application No. 08/480,964
Thus, since § 102(f) is "a derivation provision," a rejection
thereunder cannot be based solely on the fact that the claimed
subject matter was conceived by another prior to conception by
the applicant, but rather, there must also be evidence that the
applicant obtained the subject matter from that other person,
i.e., that the prior conception was communicated to the applicant
prior to the applicant’s own alleged date of conception. In
other words, for a § 102(f) rejection it must be shown that the
applicant "acquired knowledge of the claimed invention from
another, or at least so much of the claimed invention as would
have made it obvious to one of ordinary skill in the art." New
England Braiding Co. Inc. v. A.W. Chesterton Co. , 970 F.2d 878,
883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992).
We will assume in this case that Mr. Ponesmith conceived the
claimed subject matter, as shown in Exhibit A, prior to
appellant. The record does not show, however, that Mr.
Ponesmith’s conception was communicated to appellant or that
appellant otherwise acquired knowledge of it, prior to the filing
of appellant’s original (great-grandfather) application
07/968,694 on October 30, 1992. The only evidence in the record
is to the contrary, namely, appellant states in paragraph 6 of
his second declaration that "Prior to February, 1993, I had no
knowledge of Exhibit A attached hereto or of the device shown in
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