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.. . .
Page: Previous 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 Next
Last modified: November 3, 2007