Appeal No. 1998-2439
Application 08/495,286
further. We therefore sustain these rejections. Hence, our
focus is on each of the aforementioned 35 U.S.C. § 103(a)
rejections.
We note that appellants have responded to each of the 35
U.S.C. § 103(a) rejections by relying on the same argument. This
argument involves the sole issue of prior inventorship (and its
effect on whether Murch ‘295 is considered prior art). (Brief,
page 3). Our determinations regarding this issue are set forth
below.
Appellants state that all of the inventors of Murch ‘295 are
inventors in the present application. (Brief, page 2).
Appellants state that by signing the declaration of the present
application, the inventors have explicitly agreed that to the
extent the presently claimed invention is disclosed in, or
suggested by, the disclosure of Murch ‘295, but not claimed in
Murch ‘295, it was done on behalf of the present inventive
entity. Thus, in effect, since the present application and Murch
‘295 were copending, appellants assert that the present
application is a continuation-in-part of Murch ‘295. Appellants
state they will file a new oath and declaration to that effect,
if necessary. (brief, pages 2-3). Appellants refer to the case
of In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 935 (CCPA
1982), and state that there is no need to file a Rule 132 or 131
declaration to establish prior inventorship. We have reviewed
the case of In re DeBaun, and provide the following comments.
In In re DeBaun, the ‘678 patent had as inventors, appellant
and Noll, and the application on appeal had as inventor,
appellant.
On the other hand, in the instant case, Murch ‘295 has, as
inventors, Bruce P. Murch, Brian J. Roselle, and Kyle D. Jones.
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