Appeal No. 1997-3322
Application No. 08/353,940
under 35 U.S.C. § 102(a), such a publication must provide knowledge that the invention
has been completed by a reduction to practice. This is not the context in which the printed
publication of Ward accompanying the Declaration under 37 CFR
§ 1.131 presents itself. In fact, it is well settled that in consideration of Affidavits under 37
CFR § 1.131, “office practice does not always insist upon the first records which were
made and that consideration of other records made prior to the date involved is not
prohibited by the rule.” Ex parte Harrington, Jr., 1967 Dec. Comm’r Pats. 4 (Bd. App.
1966).
We do not now comment on the sufficiency of the Declaration submitted under 37
CFR § 1.131, but only state that its failure to be considered by the examiner is error.
We cannot sustain the rejection of the claims under 35 U.S.C. § 103 in view of Novotny
1991, for the reasons discussed herein.
35 U.S.C. § 103
Claims 1-4, 9-15, 19-33 stand rejected under 35 U.S.C. § 103 as unpatentable for
obviousness over Novotny 1986 in view of Skerra.
Rejection of claimed subject matter as obvious under 35 U.S.C. § 103 in view of a
combination of prior art references requires consideration of whether prior art would have
suggested to those of ordinary skill in art that they should make claimed composition or
device, or carry out claimed process, and whether prior art would also have revealed that
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