Appeal No. 1999-0281 Page 7
Application No. 08/629,727
on the advice of counsel. The Court of Customs and Patent
Appeals found this affidavit sufficient to prevent the prior
disclosure in the joint patent from being used as prior art
against DeBaun's individual discovery. The court rejected the
argument that all information disclosed in a joint patent was
necessarily the product of a joint invention. The court
stated: "The [joint] patent is silent with respect to who
invented the [cross] section itself, and we do not presume
that it is the invention of DeBaun and Noll jointly or of
either of them." Id. at 463, 214 USPQ at 936. The DeBaun
court explained that in such a case "the proper subject of
inquiry was ... what the evidence showed as [to] who invented
the [cross section disclosed in the patent]." Id. at 462, 214
USPQ at 935 (emphasis added).
Thus, DeBaun requires a factual determination as to which
parts of the Kolbus patent were the product of joint work and,
hence, would constitute prior art, and as to which parts were
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