Appeal No. 2001-2584 Page 8
Application No. 08/462,817
The publication date of the Green reference is March 13, 1986. The
instant application was filed on June 5, 1995. However, through a number of
divisional applications (08/165,708 (filed December 10, 1993), 07/667,602 (filed
March 7, 1991), 07/108,471 (filed October 20, 1987)) the application receives
benefit of an effective filing date of, at least, October 20, 1987. The 07/108,471
application, however, is a continuation-in-part of Application No. 06/922,585
(filed October 24, 1986). Therefore, unless appellants are entitled to benefit of
the 06/922,585 application of which the present application is a continuation-in-
part, the Green reference is available as prior art under 35 U.S.C. § 102(b).
There is, however, no evidence on this record that the examiner
performed the necessary fact-finding to determine if appellants’ original
application, 06/922,585, can support the claims now on appeal. Upon return of
the application, the examiner should consider the 06/922,585 application to
determine if, in fact, it provides support for the claims as they now appear.
Assuming for the basis of this opinion, that appellants’ are entitled to the
October 24, 1986 effective filing date, we note that in response to the examiner’s
rejection, appellants argue (Brief, page 9), “[a] declaration (pursuant to Rule 131)
was submitted by all seven inventors … clearly demonstrating that the invention
described herein was conceived and reduced to practice in the United States
prior to the effective date of the reference….”
The examiner, however, maintains his rejection of the claimed invention,
finding (Answer, page 10) support for his position in a quote (Answer, page 9)
from In re Clarke, 356 F.2d 987, 961, 148 USPQ 665, 670 (CCPA 1966), citing
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