ZHOU et al. V. KEAGY et al. - Page 28





                                                                                  Interference No. 104,649              
                                                                                              Page No. 25               
              invention, may file a declaration that demonstrates an actual reduction to practice in this country       
              for the claimed invention that is prior to the effective date of the reference. 37 C.F.R. § 1. 131        
              (2000) .3 Accordingly, we review Keagy's declarations to determine whether they comply with               
              the standards set forth in Rule 13 1.                                                                     
                     The three declarations submitted by Keagy are from Oscar R. Pieper, Yury Shapiro and               
              Naum Pinkhasik. (KX 1006-1008). Mr. Pinkhasik is a named inventor for the Keagy '744                      
              application whereas Mr. Pieper and Mr. Shapiro are not. The three declarations tell a consistent          
              story. That is, Mr. Pinkhasik and Yury Shapiro entered the United States with a working                   
              prototype of a removable microprism platen for an electronic fingerprint reader in late December          
              1993. (KX 1007, 114-5 and KX 1008, % 3-4). This removable platen was then tested at IT                    


                     'The pertinent portions of 37 C.F.R. § 1. 131 read as follows:                                     
                     (a) When any claim of an application ...the inventor of the subject matter of the                   
                     rejected claim... may submit an appropriate oath or declaration to establish                       
                     invention of the subject matter of the rejected claim prior to the effective date of               
                     the reference or activity on which the rejection is based. The effective date of a                 
                     U.S. patent . . is the earlier of its publication date or date that it is effective as a           
                     reference under 35 U.S.C. 102(e).... Prior invention may not be established                        
                     under this section if either:                                                                      
                            (1) The rejection is based upon a U.S. patent or U.S. patent application                    
                            publication of a pending or patented application to another or others which                 
                            claims the same patentable invention as defined in § 1.601 (n); or                          
                            (2) The rejection is based upon a statutory bar.                                            
                     (b) The showing of facts shall be such, in character and weight, as to establish                   
                     reduction to practice prior to the effective date of the reference, or conception of               
                     the invention prior to the effective date of the reference coupled with due                        
                     diligence from prior to said date to a subsequent reduction to practice or to the                  
                     filing of the application.. . .                                                                    







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