Interference No. 104,649
Page No. 24
insufficient to establish an actual reduction to practice for the fingerprint system of Count 1.
(Paper No. 24, pages 14-17).
In opposing Zhou's Preliminary Motion 1, Keagy filed three new declarations. (KX
1006, 1007 and 1008). Keagy alleges that these three declarations establish that Natim
Pinkhasik, a joint inventor, and Yury Shapiro, a co-employee of Pinkhasik, tested an embodiment
of a fingerprint sensing system in the United States in December 1993 and/or January 1994 that
met every limitation of Count 1. (Keagy Opposition 1, Paper No. 34, p. 2, ý 11).
Prior to discussing the relative merits of Keagy's new declarations, we note that Zhou has
taken the position that the "supplemental" declarations "cannot be used to cure its [Keagy's)
earlier issued '148 patent and are therefore irrelevant to a determination of the adequacy of
Keagy's original Rule 131 submissions." (Zhou Reply 1, Paper No. 40, p. 3). Keagy, however,
is not attempting to "cure" an alleged inadequacy in the prosecution of its earlier issued '148
patent. Rather, Keagy is present in this interference based on the claims of its involved '744
application. Zhou has not cited any precedent that, absent inequitable conduct, prevents an
applicant ftom submitting new material evidence in a continuation application. Moreover, we
are not aware of any such precedent. See, e.g., Applied Materials v. Advanced Semi. Materials,
98 F.3d 1563, 40 USPQ2d 1481, (Fed. Cir. 1996)(After an appeal was lost at the CCPA, new
and material evidence was submitted in to the PTO. This evidence was properly considered by
PTO.),
An inventor faced with a rejection under 35 U.S.C. § 102 or § 103 based upon a reference
which is prior art under 35 U.S.C. § 102(a) or (e), and which does not claim the same patentable
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