Appeal No. 1999-2347
Application 08/892,560
applicant. Woo's claimed inventions would have been obvious over
Appellants' claim 21. Thus, Appellants' cannot rely on MPEP §
715.03 to swear back of Woo.
We conclude that Woo's claim 1 and Appellants' claim 21 are
directed to the same patentable invention and, thus, Woo may not
be overcome with a declaration under 37 CFR § 1.131. For this
reason, we need not address the merits of the declaration.
Normally, an applicant can provoke an interference with a patent
if he or she is claiming the same invention and is not entitled
to swear back of that patent. However, since we sustain the
rejections based on other prior art, we provisionally sustain the
rejections over Woo. If the rejections over the non-Woo prior
art references are reversed upon judicial review, Appellants may
file a statement under 37 CFR § 1.608(b) to try to provoke an
interference with Woo.
35 U.S.C. § 102(e)/103(a) ) Woo
Appellants rely on the declaration under 37 CFR § 1.131 to
remove Woo as a prior art reference. The merits of the
rejections of claims 21, 23, 24, 26, 28, and 29 under 35 U.S.C.
§ 102(e)/103(a) over Woo are said to be moot and are not
otherwise contested (Br12). Because we conclude that Woo may not
be overcome with a 37 CFR § 1.131 declaration, and because the
rejections are not otherwise argued, the rejections of claims 21,
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