Appeal No. 2001-0531 Page 7
Application No. 08/216,592
publication of Yu et al.” Examiner’s Answer, page 15. She concluded, however,
that the 131 declaration was insufficient to remove Yu as prior art because
the evidence submitted is insufficient to establish a reduction to
practice of the invention in this country or a NAFTA or WTO
member country prior to the effective date of the Yu et al. reference
. . . [because] the actual research was done in France. Therefore,
the claimed invention was not reduced to practice in this country
prior to the publication of Yu et al. because the manuscript is
considered to be conceptual and not a reduction to practice.
Id. The examiner stated that “[i]f the recipient of the manuscript had repeated the
experiments set forth in the manuscript before December 20, 1991, then the
invention would be considered to be reduced to practice in this country.” Id.
Thus, the examiner’s position appears to be that Appellants’ evidence
must show that the invention was reduced to practice in this country prior to the
effective date of Yu, in order to antedate the reference. This position is not
supported by Rule 131.
Rule 131 provides three alternative ways of showing prior invention. See
37 CFR § 1.131(b):
The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference, coupled with due diligence from prior to said date
to a subsequent reduction to practice or to the filing of the
application.
(Emphasis added.) The MPEP also makes clear that
37 CFR 1.131(b) provides three ways in which an applicant can
establish prior invention of the claimed subject matter. The
showing of facts must be sufficient to show:
(A) reduction to practice of the invention prior to the effective
date of the reference; or
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