Appeal No. 1998-2439
Application 08/495,286
The instant application has, as inventors, Bruce P. Murch, Brian
J. Roselle, Kyle D. Jones, Keith H. Baker, Thomas E. Ward, and
Toan Trinh. Hence, the instant application has three more
inventors not named as inventors in Murch ‘295. This is a
different situation than found in In re DeBaun, wherein the
application had no inventors not named in the ‘678 patent.
Also, the court in In re DeBaun stated:
the question is whether what was
constructively reduced to practice
[in the ‘678 patent] was appellant’s own
conception. On the basis of the record
here, which includes appellant’s unequivocal
declaration that he conceived anything
in the ‘678 patent disclosure which suggests
the invention claimed in his present application,
that has been satisfactorily answered.
Id., 214 USPQ at 936.
This parallels the examiner’s comments made on page 8 of the
answer. The examiner states that in In re DeBaun, Mr. De Baun
provided an unequivocal declaration in which he stated that he
conceived anything in the ‘678 patent disclosure which suggests
the claimed invention in his application. The examiner also
states that, accordingly, the ‘678 patent reflected Mr. DeBaun’s
own work, and thus could no longer be used under 35 U.S.C.
§ 102(e). In the instant case, appellants have not provided such
an unequivocal declaration. That is, the declaration discussed
at the bottom of page 2 of the brief (which we understand to be
the signed declaration and power of attorney filed on September
5, 1995) is not such an unequivocal declaration.
The examiner also correctly points out that the instant
application has a different inventive entity from Murch ‘295.
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