Appeal No. 1997-2204
Application No. 08/440,989
claimed (Combined Declaration and Power of Attorney, page 1). Appellant re-averred his
status as the sole inventor of compound 7, illustrated in Scheme II of Portoghese et al., in a
Declaration under 37 CFR § 1.132 filed as Paper No. 21 on November 10, 1993 in parent
Application No. 07/867,997 (also filed as Paper No. 11 on February 20, 1996 in this
application). In the same declaration, appellant described the type of contribution made by
Garzon-Aburbeh, Nagase, Lin and Takemori, resulting in their acknowledgment as co-
authors of the Portoghese et al. publication, but consistent with appellant's sworn statement
that he is the sole inventor of compound 7 (Paper No. 11, paragraphs 5, 6, and 7).
On these facts, we find that In re Katz is controlling; that the declaration evidence
provides "a clear alternative conclusion" to the examiner's inference that the name of co-
author Takemori appears on the Portoghese et al. publication because he (Takemori) is a
coinventor; and that there is no reason to look behind appellant's declaration (Paper No.
11).
Accordingly, we hold that the Portoghese et al. reference does not constitute legally
available prior art, and we reverse the examiner's rejection under 35 U.S.C. § 102(a).
II. Rejection under 35 U.S.C. § 112, first and second paragraphs
Claims 21 also stands rejected under 35 U.S.C. § 112, first and second
paragraphs, as based on a non-enabling disclosure "and/or" failing to particularly point out
and distinctly claim the subject matter which applicant regards as the invention (Examiner’s
Answer, page 4).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007