Appeal No. 2001-0531 Page 9
Application No. 08/216,592
had repeated the experiments set forth in the manuscript before December 20,
1991, then the invention would be considered to be reduced to practice.”) and
page 16 (“[D]elivery of the manuscript from France into the United States is
knowledge of the invention that was brought into this country and disclosed to
others.”).
The examiner also concedes that the invention was constructively reduced
to practice on January 24, 1992. See the Examiner’s Answer, page 16
(“Reduction to practice occurred with the filing of application SN 07/825667 on
January 24, 1992.”). The only issue, therefore, is whether Appellants have
provided evidence of diligence, to link the prior conception to the later
constructive reduction to practice.
Appellants’ 131 declaration includes evidence intended to show diligence
for the time period between reception of the manuscript in this country and the
filing of the ‘667 application five weeks later. Appellants assert that the evidence
shows that from December 19, 1991, to January 9, 1992, the manuscript was
under review by the assignee to determine whether to file a patent application;
that on January 13, 1992, the assignee requested outside patent counsel to
prepare a patent application based on the manuscript; and that an attorney
worked on drafting the application almost daily from January 14, 1992, until the
application was filed on January 24, 1992. The examiner has not alleged that
Appellants’ showing of diligence is in any way deficient.
Paper No. 49 (filed May 8, 2002). Finally, we note that the examiner treated the 131 declaration
on its merits, and therefore a remand to the examiner is not necessary.
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