Appeal No. 2002-0741
Application No. 08/935,348
subject matter of appealed claims 1, 2, 4-6 and 8-12. Instead,
appellants contend that Paul does not qualify as prior art under
35 U.S.C. § 102(e) because the filing date of Paul (August 8,
1995) is after the date appellants completed their invention. In
support of this position, appellants have submitted a declaration
under 37 CFR § 1.131 for the purpose of swearing behind the
filing date of Paul.
A threshold issue with respect to this rejection is whether
37 CFR § 1.131 is available to appellants to swear behind the
filing date of the Paul reference. In this regard, 37 CFR
§ 1.131, in pertinent part, states that
Prior invention may not be established under this
section if . . . :
(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).
. . . [Emphasis added.]
37 CFR § 1.601(n) states that
(n) Invention “A” is the same patentable invention as
an invention “B” when invention “A” is the same as (35
U.S.C. § 102) or is obvious (35 U.S.C. [§] 103) in view
of invention “B” assuming invention “B” is prior art
with respect to invention “A”. Invention “A” is a
separate patentable invention with respect to invention
“B” when invention “A” is new (35 U.S.C. [§] 102) and
non-obvious (35 U.S.C. [§] 103) in view of invention
“B” assuming invention “B” is prior art with respect to
invention “A”.
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