Appeal No. 1995-2789
Application No. 07/788,114
Accordingly, we reverse the rejection of claims 6 and 10-13 under 35
U.S.C. § 103 as being unpatentable over Reinsheld in view of Winnacker
Having determined that the examiner has not established a prima facie
case of obviousness, we find it unnecessary to discuss the Declaration, filed
under 37 CFR § 1.131, relied on by appellants to rebut any such prima facie
case.
OTHER ISSUES
If upon further prosecution the merits of appellants’ declaration filed under
37 C.F.R. § 1.131 becomes an issue, we make the following observation. In
evaluating a declaration filed under 37 CFR § 1.131, attention should be given to
the requirements set forth in 37 CFR § 1.131(a)(1). Specifically, “[t]he 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 date of the printed
publication.” In our review of this record we note of interest that appellants’
declaration filed under 37 CFR § 1.131 does not demonstrate “completion of the
invention in this country or in a NAFTA or WTO member country before the date
of the printed publication.
We note that this appeal was briefed prior to our appellate reviewing
court’s decision in U.C. v. Eli Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398
(Fed. Cir. 1997). In the event of further prosecution, the examiner should step
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