Appeal No. 1999-0653 Page 12
Application No. 08/226,564
(a)(1) When any claim of an application or a patent under reexamination is
rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C. 103 based on a U.S. patent to
another or others which is prior art under 35 U.S.C. 102 (a) or (e) and which
substantially shows or describes but does not claim the same patentable invention, as
defined in § 1.601(n), or on reference to a foreign patent or to a printed publication, the
inventor of the subject matter of the rejected claim, the owner of the patent under
reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47, may submit an
appropriate oath or declaration to overcome the patent or publication. The oath or
declaration must include facts showing a completion of the invention in this country or in
a NAFTA or WTO member country before the filing date of the application on which
the U.S. patent issued, or before the date of the foreign patent, or before the date of the
printed publication. When an appropriate oath or declaration is made, the patent or
publication cited shall not bar the grant of a patent to the inventor or the confirmation of
the patentability of the claims of the patent, unless the date of such patent or printed
publication is more than one year prior to the date on which the inventor's or patent
owner's application was filed in this country.
(2) A date of completion of the invention may not be established under this
section before December 8, 1993, in a NAFTA country, or before January 1, 1996, in
a WTO member country other than a NAFTA country.
(b) The showing of facts shall be such, in character and weight, as to establish
reduction to practice prior to the effective date of the reference, or conception of the
invention prior to the effective date of the reference coupled with due diligence
from prior to said date to a subsequent reduction to practice or to the filing of
the application. Original exhibits or drawings or records, or photocopies thereof,
must accompany and form part of the affidavit or declaration or their absence
satisfactorily explained [emphasis added].
The appellant (reply brief, page 2) concedes that the effective date of the Murray patent as
prior art under 35 U.S.C. § 102(e) is October 15, 1993 and asserts that the Folise and Igelmund
declarations establish that the appellant's invention was conceived at least as early as August 1993
(prior to the effective date) and that the appellant was diligent in reducing the invention to practice in the
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