Appeal No. 2001-1306 Page 26
Application No. 08/100,019
and their effectiveness in removing the above-discussed
references by establishing prior date of completion of the
invention. It is our objective that the Examiner reevaluate the
references in view of our discussions and determine whether
Appellant’s declarations under 37 CFR § 1.131 have properly
established the date of the invention prior to the effective
filing dates of the applied prior art, or an interference between
Appellant’s application and any of the cited references should be
declared.
Upon remand, if the examiner decides to enter new grounds of
rejection based on further consideration of the prior art as
discussed above in the “DISCUSSION” section, the examiner should
ensure that all references relied upon have been evaluated in
view of the provisions of 37 CFR § 1.131. On the other hand, if
the examiner determines that any of the applicable references
claim “same invention” according to the provisions of 37 CFR
§ 1.601(n), the reference can only be overcome by way of
interference according to 37 CFR 1.608. We also caution the
Examiner that if any claims drawn to the invention of the
reference(s) are presented in the application more than one year
after the issue date of the patent(s), a rejection of the claims
of the application under 35 U.S.C. 135(b) should be made. See In
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007