Appeal No. 1999-0653 Page 14
Application No. 08/226,564
that Exhibit B evidences reduction of the invention to practice in the form of a prototype at least as early
as December 1, 1993 (after the effective date), 37 CFR § 1.131(b) requires that the showing of facts
be such, in character and weight, as to establish 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. Thus, in the instant situation, the appellant's showing of facts must
establish due diligence from prior to October 15, 1993 to December 1, 1993.
To satisfy the due diligence showing requirement of 37 CFR § 1.131(b), the appellant must
present proof of diligence, no matter how short the period to be covered. In re Mulder, 716 F.2d
1542, 219 USPQ 189, 193 (Fed. Cir. 1983) (Even a two-day hiatus in the evidence of due diligence
rendered the inventors' showing of facts ineffective to overcome the applied reference). Moreover, to
establish diligence, the inventor must provide specific details as to what was done and when it was done
during the critical period. See Gould v. Schawlow, 363 F.2d 908, 918, 150 USPQ 634, 643 (CCPA
1966).
The Folise and Igelmund declarations provide absolutely no explanation of the appellant's
activities with regard to the invention set forth in claims 1, 2 and 15 to support the appellant's assertion
of diligence. In particular, the statement in paragraph 4 of the Igelmund declaration that the declarant
"worked diligently with Mr. Folise's office in preparing a patent application on the invention" is merely
conclusory in nature and fails to indicate (1) the actions that were taken by the declarant toward
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