we agree with the general principles which appellant
seems to be advocating, namely, that a rule of reason should
be followed in cases of this kind and that courts should be
somewhat liberal in determinations of diligence of attorneys
and of their clerical and stenographic staffs, since the law
cannot presume that such people can immediately begin and
expeditiously perform their duties as soon as work appears
on their desks. Nevertheless we think that appellant is
attempting to use those principles as substitutes for record
evidence, of which there is very little.
As we view this appeal, appellant asks us to rule that
even after a patent application is in draft form, with
finished drawings, the acts of (1) considering and approving
the application by a supervisory attorney, (2) final
checking, (3) placing the approved and checked draft
application in final form, and (4) preparing the formal
papers for execution constitute "reasonable diligence,"
within the meaning of 35 U.S.C. § 102(g), if performed
within a period of two months.
Obviously such a ruling must depend on a great number
of circumstances such as, but not limited to, complexity of
the invention, length of the application, detail of the
drawings, experience, workload and availability of the
attorney, availability of the draftsman and the inventor
during the period involved, size of the attorney's staff,
procedure and policy in reviewing the application, type and
thoroughness of the review, number of people involved in
preparing the application and their location, and the number
of changes which the subject application underwent.
Certainly, evidence as to all these factors need not be
of record; possibly evidence as to only one or two would
suffice in certain cases. However, in the present appeal we
know essentially nothing about the handling of the
application during the two-month period except that (a)
Breen did in fact "consider and approve" the application,
and (b) the other work, i.e., checking, placing in final
form, and preparing the formal papers, was done sometime.
There is no end to the inferences which might be drawn from
the scanty record before us and we prefer not to indulge in
them, but we cannot overlook the fact that Koike's priority
date falls nearly midway in this two-month period and it is
certainly possible that all of D'Amicols activity took place
during the period prior to October 29, whereupon the
application lay idle for nearly one month awaiting execution
38
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