Appeal No. 2000-0379
Application No. 08/815,352
reasonable showing supporting the basis for the applicant's
position."). 3
Finally, that the court has not required an applicant to
file a § 1.132 affidavit or declaration is evident from the
fact that in Mathews the applicant successfully overcame the
reference patent based on a § 1.132 affidavit by the patentee,
Dewey, and on Mathews' original oath which accompanied the
application. Mathews, 408 F.2d at 1396, 161 USPQ at 279.
For the foregoing reasons, in our view it is only
necessary that the evidence submitted by the applicant
demonstrate (1) that the patentees derived that subject matter
relied on in the rejection from the applicant and (2) that the
applicant is the
3In Kroger, the Board distinguished over Katz on
the ground that Knaster, one of the authors of the reference
publication, had refused to sign a § 1.132 declaration
attributing the invention to Kroger and also had submitted a
letter claiming to be a coinventor of the subject matter
relied on in the publication. 219 USPQ at 372.
Because the reference in Kroger was an article
rather than a patent, the Board's construction of Facius,
Mathews, and Carriera as requiring a patentee to "disclaim the
subject matter and attribute it to the applicant," 219 USPQ at
372, constitutes non-binding dictum, which we note is not
mentioned in MPEP § 716.10.
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