Appeal No. 1997-2204
Application No. 08/440,989
constitutes legally available prior art under 35 U.S.C. § 102(a) where co-authors Garzon-
Aburbeh, Nagase, Lin and Takemori are not listed as coinventors in this application. We
will not sustain this rejection.
As prescribed in 35 U.S.C. § 102(a), a person shall be entitled to a patent unless
the invention was known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention thereof by the applicant
for patent. One's own invention, whatever the form of disclosure to the public, may not be
prior art against oneself, absent a statutory bar. In re Facius, 408 F.2d 1396, 1406, 161
USPQ 294, 302 (CCPA 1969). Further, as stated in In re Katz, 687 F.2d 450, 455, 215
USPQ 14, 18 (CCPA 1982), "authorship of an article by itself does not raise a
presumption of inventorship with respect to the subject matter disclosed in the article."
Thus "co-authors may not be presumed to be coinventors merely from the fact of co-
authorship." Id.
In Katz, the court accepted a declaration by appellant explaining that two co-authors
of the Chiorazzi et al. publication "were students working under the direction and
supervision of the inventor, Dr. David H. Katz." Id. According to the court, this declaration
provided "a clear alternative conclusion to the board's inference that their names were on
the article because they were coinventors." Id.
In the instant case, appellant has averred in the declaration accompanying this
application that he is the original, first, and sole inventor of the subject matter which is
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007