Appeal No. 1995-4400
Application 07/694,302
i.e., Robertson, and not the four applicants for patent, invented the monoclonal antibody
720 described in the Agreement.
Presumably, had all four inventors signed the Agreement, examiner would not have
made the rejection. Clearly, had all the inventors signed the Agreement, there would be no
dispute that the monoclonal antibody 720 that was being transferred was "applicants'" own
work. Therefore, there would be no question that appellants would have been entitled to
transfer their invention to Specter during the one year grace period for filing a patent
application accorded inventors under the statute. See 35 U.S.C. § 102(b). Under that
circumstance, the '91 MTA would not be evidence of work of "another" and therefore could
not have been legally available prior art under 35 U.S.C. §102(a). By emphasizing the
difference between the single signer of '91 MTA and the four applicants for patent,
examiner appears to be asking us to accord a different status to '91 MTA as legally
available prior art under 35 U.S.C. § 102(a) on the grounds that less than all the applicants
for patent signed the Agreement. We decline to do so. In our view, this is confusing
signing an MTA with inventorship.
All that we are provided is a transfer agreement with a single reference to
"Monoclonal Antibody 720" and the fact that it was signed by only one of the four co-
applicants. The examiner has not explained why the fact that Robertson signed the transfer
disclosure comes within the scope of § 102(a) only if the description is not of appellant's own work." In re
Katz, 689 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982).
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