Appeal No. 2001-1306 Page 19
Application No. 08/100,019
(a) When any claim of an application or a patent under
reexamination is rejected on reference to a domestic patent
which substantially shows or describes but does not claim
the same patentable invention, as defined in § 1.601(n), as
the rejected invention, or on reference to a foreign patent
or to a printed publication, and the inventor of the subject
matter of the rejected claim, the owner of the patent under
reexamination, or the person qualified under §§ 1.42, 1.43
or 1.47, shall make oath or declaration as to facts showing
a completion of the invention in this country before the
filing date of the application on which the domestic patent
issued, or before the date of the foreign patent, or before
the date of the printed publication, then the patent or
publication cited shall not bar the grant of a patent to the
inventor or the confirmation of the patentability of the
claims of the patent, unless the date of such patent or
printed publication is more than one year prior to the date
on which the inventor’s or patent owner’s application was
filed in this country. [Emphasis added.]
We further observe that 37 CFR § 1.601(n) defines "same
patentable invention" as follows:
(n) Invention "A" is the “same patentable invention” as an
invention "B" when invention "A" is the same as (35 U.S.C.
§ 102) or is obvious (35 U.S.C. 103) in view of invention
"B" assuming invention "B" is prior art with respect to
invention "A". Invention "A" is a separate patentable
invention with respect to invention "B" when invention "A"
is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in
view of invention "B" assuming invention "B" is prior art
with respect to invention "A".
Initially, the rules indicate that if the date of the reference
to be overcome is more than one year prior to the date on which
Appellant’s application was filed (July 30, 1993), the
declaration is ineffective to establish prior invention and
overcome the rejection. Secondly, determination of the “same
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