Appeal No. 2001-1306 Page 18
Application No. 08/100,019
previous Office Action (Paper No. 7, mailed February 6, 1995).
In the same office action, the Examiner also rejected the claims
under 35 U.S.C. § 103 as being unpatentable over Spector ‘832,
Spector ‘224 and Kirkendall. Appellant filed a declaration under
37 CFR § 1.131 to establish invention prior to June 27, 1991
(Paper No. 8, filed May 8, 1995). The Examiner found the
declaration proper for antedating Wheeler and Olson, but not for
the remaining references. Appellant submitted a second
declaration under 37 CFR § 1.131 (Paper No. 10, filed October 23,
1995 which was perfected in paper No. 15, filed April 19, 1996)
to establish invention prior to January 2, 1990 in order to
overcome the rejection based on Spector ‘832, Spector ‘224 and
Kirkendall. We remand this application with the following
discussion and recommend that the examiner revisit the
effectiveness of the § 1.131 declarations in overcoming the
rejections of claims 1-7 and reconsider the propriety of similar
rejections applied to claims 1 through 8 and 10 through 17, which
are presently under appeal.
We observe that 37 CFR § 1.131(a) (July 1, 1994) as amended
at 53 Fed. Reg. 23734 (June 23, 1988), which was controlling at
the time of Appellant’s filing the declarations states:
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007