Appeal No. 2000-0379
Application No. 08/815,352
the Dudley patent declaring that the teachings cited by the
examiner are Appellant's own invention. This declaration is
merely hearsay.
Answer at 6.
The examiner's objection to the declaration as containing
hearsay is misplaced because hearsay is admissible in PTO
ex parte proceedings. In re Epstein, 32 F.3d 1559, 1565-66,
31 USPQ2d 1817, 1821 (Fed. Cir. 1994).
As for the rest of the examiner's objections, while it is
true that each of the above court decisions which concerns a
reference U.S. patent involves (a) an application and
reference patent that are commonly owned, (b) an application
whose inventive entity overlaps the inventive entity named in
the reference patent, (c) a § 1.132 affidavit or declaration
executed by the applicant, or (d) a disclaiming § 1.132
affidavit declaration executed by the patentee(s), none of
these factors is described as a requirement for demonstrating
that the applicant is the inventor of the subject matter
relied on in the reference patent. More particularly, while
in two of the decisions it is noted that the application and
the reference patent are commonly assigned (see Facius, 408
F.2d at 1400, 161 USPQ at 297; Mathews, 408 F.2d at 1394, 161
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