Appeal No. 2000-0379
Application No. 08/815,352
inventor of that subject matter. See Facius, 408 F.2d at
1407, 161 USPQ at 302 ("The real question is whether, in
addition to establishing derivation of the relevant disclosure
from himself, appellant has also clearly established the fact
that he invented the relevant subject matter disclosed in the
patent."). 4
We begin by noting that the "minimum correlation"
encoding technique described in the Dudley patent and relied
on by the examiner (corresponding to Appellant's claimed
"maximum distance" encoding technique) is not claimed in the
Dudley patent, which instead is directed to apparatus for
controlling enablement of the sync mark detector (col. 4, ll.
10-49). As a result, there is no presumption that that
encoding technique is the invention of the Dudley inventors.
See DeBaun, 687 F.2d at 463, 214 USPQ at 936 (quoting Facius,
408 F.2d at 1406, 161 USPQ at 301)("[T]he existence of
combination claims does not evidence inventorship by the
4MPEP § 716.10 is consistent with this conclusion.
That section gives as Example 2 a reference in which "the
author or patentee is an entity different from applicant" and
explains that "[i]n the situation described in Example 2, an
affidavit under 37 CFR 1.132 may be submitted to show that the
relevant portions of the reference originated with or were
obtained from the applicant."
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