Appeal No. 1998-2848
Application 08/398,862
Thus, the Examiner finds the declarations and evidence
insufficient to establish conception and diligence, both of
which are necessary to antedate the Smith patent.
Appellant argues that the Peppel declarations provide
evidence of conception prior to the effective date of Smith
(December 7, 1994) along with evidence of due diligence
(Br18). The declarations authenticate the evidence, but make
no attempt to correlate the evidence with the limitations of
the claims.
We agree with the Examiner's conclusion that the evidence
is not sufficient to establish conception and diligence, but
disagree with the Examiner's expressed reasons. Thus,
although we sustain the rejection, we designate this a new
ground of rejection because Appellant has not had a fair
opportunity to respond. See In re Kronig, 539 F.2d 1300,
1302, 190 USPQ 425, 426 (CCPA 1976) (the "ultimate criterion"
of whether a rejection is new is "whether appellants have had
a fair opportunity to react to the thrust of the rejection").
The Examiner states that showing is insufficient because
the evidence is not "demonstrative evidence." Demonstrative
evidence is evidence addressed directly to the senses without
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