Appeal No. 1999-0653 Page 15
Application No. 08/226,564
either reducing the invention to practice in the form of a prototype or preparing a patent
application and (2) the dates on which those actions were taken. The statement on page 2 of
the reply brief to the effect that the appellant was diligent in both reducing the invention to
practice in the form of a prototype and in filing the subject patent application is fraught with the
same deficiencies as the above-noted statement in the Igelmund declaration and, furthermore,
being unsworn and not in declaration form, can be taken merely as argument and not to
establish facts. See In re Mehta, 347 F.2d 859, 866, 146 USPQ 284, 289 (CCPA 1965).8
For the foregoing reasons, even accepting the appellant's argument that the Folise and Igelmund
declarations are sufficient to establish conception of the invention as early as August 19, 1993 and
reduction to practice as early as December 1, 1993, they fail to establish due diligence from prior to the
effective date of the reference (October 15, 1993) until reduction to practice of the invention or filing of
the application as required by 37 CFR § 1.131. Accordingly, we conclude that the declarations
submitted with the reply brief are ineffective to overcome the Murray patent as prior art.
While, as discussed above, we have not considered the supplemental declaration of Mr.
Igelmund submitted with the first request to strike in reaching our decision, because it was refused entry
by the examiner, we do wish to point out that this supplemental declaration was submitted "[i]n further
support of the appellant's contention that it conceived of the claimed invention well prior to the effective
8Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405,
181 USPQ 641, 646 (CCPA 1974).
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