Appeal No. 1998-1664
Application No. 08/323,982
or to a printed publication, the inventor of the
subject of the rejected claim, the owner of the
patent under reexamination, or the party qualified
under 37 CFR 1.42, 1.43 or 1.47, may submit an
appropriate oath or declaration to overcome the
patent or publication. . . [Underscoring added.]
Hence, a declaration under 37 CFR § 1.131 cannot be used to
antedate a U.S. patent which is available as prior art under
§ 102(e) and which claims the “same patentable invention.” In
re Zletz, 893 F.2d 319, 323, 13 USPQ2d 1320, 1323 (Fed. Cir.
1989) (“[W]hen the subject matter sought to be antedated is
claimed in the reference patent, Rule 131 is not available and
an interference must be had to determine priority.”).
If the examiner determines that the claims of the Adams
or Blystone patent and the appealed claims recite the “same
patentable invention,” Adams or Blystone would still be
available as prior art under 35 U.S.C. § 102(e). It would
then follow that Adams and Blystone, unlike prior art which is
available only under 35 U.S.C. § 102(g), can be used in 3
rejections under 35 U.S.C. § 103.
2. The appellants have argued claim 23 separately from
the other appealed claims. (Appeal brief, pages 5 and 8).
335 U.S.C. § 103(c) (1999).
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