Appeal No. 2001-1918
Application No. 09/096,999
(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. Original exhibits of
drawings or records, or photocopies thereof, must accompany and form
part of the affidavit or declaration or their absence satisfactorily explained.
We find that the filing date of the instant application is June 13, 1998. However,
appellant claims benefit under 35 U.S.C. § 120 to an earlier application filed February
12, 1996; the present application is designated a continuation-in-part of the earlier
application. Since there is no indication by the examiner to the contrary, we assume
that all present claims find support (i.e., as required by 35 U.S.C. § 112, first paragraph)
in the earlier application. The effective filing date of the claims before us is therefore
deemed to be February 12, 1996. Blocher, filed May 13, 1994 and issued August 29,
1995, is thus considered to be a patent to others which is prior art under 35 U.S.C.
§ 102(e), and therefore may be antedated by a Rule 131 declaration provided that the
requirements of 37 CFR § 1.131(a)(1) are met. The critical date -- that which must be
antedated to remove Blocher as a reference -- is May 13, 1994.
Appellant contends that “the Applicant worked diligently on the subject matter of
the present invention, in that as noted the Applicant conceived of his invention prior to
the May 13, 1994 filing date of U. S. Pat. No. 5,446,617 of Blocher.” (Brief at 8.)
Conception is defined as “the formation in the mind of the inventor of a definite
and permanent idea of the complete and operative invention, as it is hereafter to be
applied in practice.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007