Appeal No. 2001-0531 Page 8
Application No. 08/216,592
(B) conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to the reference
date to a subsequent (actual) reduction to practice; or
(C) conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to the reference
date to the filing date of the application (constructive reduction to
practice).
MPEP § 715.07.
The examiner focuses entirely on the first alternative provided by the rule:
reduction to practice prior to the effective filing date of the reference. Appellants’
131 declarations, however, are addressed to the third alternative provided by the
rule: prior conception coupled with due diligence to a constructive reduction to
practice.
Appellants’ 131 declaration includes declarations showing that a
manuscript was received in this country on December 19, 1991, one day before
the publication date of Yu.1 See Paper No. 22, filed November 5, 1996, pages 3-
4. The examiner appears to concede that this manuscript shows conception of
the method now claimed. See the Examiner’s Answer, page 15 (“[T]he affidavits
show that a manuscript describing the claimed invention was sent to the United
States prior to the publication of Yu et al. . . . If the recipient of the manuscript
1 We note that, as it arrived at the Board, the application file contained only the 131 declaration
signed by inventor Kastner. It did not contain copies of the 131 declaration signed by inventors
Leid and Chambon. The record indicates that the Leid declaration had been submitted together
with the Kastner declaration. See Paper No. 22 (filed Nov. 5, 1996), transmittal page. Paper No.
22 also indicated that the “Declaration executed by Dr. Chambon will be filed in a Supplemental
Response as soon as it is received by Applicants’ . . . attorney.” Id., page 3 of the Supplemental
Response. However, the administrative record contained no evidence that the Chambon
declaration had ever been submitted. At oral argument, Appellants’ attorney indicated that the
Leid and Chambon declarations had been submitted, and agreed to file new copies of the
declarations, together with evidence that they had previously been received by the PTO. The
newly submitted copies and evidence were submitted and have been entered into the file as
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