Appeal No. 1999-0281 Page 8
Application No. 08/629,727
the product of Jacobs' independent work and, hence, would not
constitute prior art. 4
The only evidence of record on this issue is set forth in
the Jacobs 37 CFR § 1.132 declaration and the Kolbus patent
itself. The Jacobs 37 CFR § 1.132 declaration states:
1. I am a co-inventor of U.S. patent application Serial
Number 08/629,727, filed April 9, 1996.
2. I am a co-inventor of U.S. Patent Number 5,599,033,
filed August 30, 1993.
3. I conceived or invented the subject matter disclosed
in U.S. Patent Number 5,599,033.
4We have assumed for purposes of this decision that the
parts of the Kolbus patent which were the product of Jacobs'
independent work would not constitute prior art against the
claims of the instant application. Note however, In re Land,
368 F.2d 866, 880-81, 151 USPQ 621, 634 (CCPA 1966)(patent of
one inventor is prior art against joint application of that
inventor and another) and Manual of Patent Examining Procedure
(MPEP)
§§ 715.01(a) and 2136.05 (when subject matter, disclosed but
not claimed in a patent issued jointly to S and another, is
claimed in a later application filed by S, the joint patent is
a valid reference unless overcome by affidavit or declaration
under 37 CFR 1.131 or an unequivocal declaration under 37 CFR
1.132 by S that he/she conceived or invented the subject
matter disclosed in the patent and relied on in the
rejection). In this case we point out that the subject matter
relied upon by the examiner is disclosed and claimed in the
Kolbus patent and that this application is filed by Jacobs and
Rust.
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