Appeal No. 2000-0379
Application No. 08/815,352
Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969), In re Katz,
678 F.2d 450, 215 USPQ 14 (CCPA 1982), and Manual of Patent
Examining Procedure (MPEP) § 716.10, which in addition to the
foregoing decisions cites In re Costello, 717 F.2d 1346, 1350,
219 USPQ 389, 392 (Fed. Cir. 1983), In re DeBaun, 687 F.2d
459, 214 USPQ 933 (CCPA 1982), In re Carreira, 532 F.2d 1356,
189 USPQ 461 (CCPA 1976), and Ex parte Kroger, 218 [sic, 219]
USPQ 370 (Bd. Pat. App. 1982). We note that of the foregoing
cases, Katz and Kroger concern references which are articles
rather than U.S. patents.
The examiner held Hull's declaration insufficient for the
following reasons:
All of the case law cited by Appellant and in the
MPEP section 716.10 pertains to overlapping
inventors or assignees. For instance, at least one
of the inventors or assignee is common to the
authors of the reference in [sic] which the
declaration addresses. In the instant case, there
are no common inventors or assignee. Hence, the
fact pattern of [A]ppellant's case does not follow
the fact pattern of the case law cited by the MPEP
section 716.10. There must be some collaboration
from the inventors or assignee of the Dudley
reference and the 132 declaration as it is presently
written is not sufficient to prove the portion of
the Dudley reference relied upon by the examiner is
Appellant's own disclosure and not prior art.
Furthermore, the declaration is not written by the Appellant.
There is no statement from the Appellant or the inventors of
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