Appeal No. 2002-0913
Application No. 09/107,643
the benefit of the filing date of the ‘681 design application,
Tracy I does not antedate the October 10, 1986 effective filing
date of Foreman.
The requirements for antedating a reference under 37 CFR
§ 1.131 are quite specific. Under this rule, the inventor of the
subject matter of the rejected claims must submit an appropriate
oath or declaration to overcome the reference by establishing a
completion of the invention including an actual 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 a time as least just
prior to said effective date to a subsequent reduction to
practice or to the filing of a U.S. patent application. See
37 CFR § 1.131(b) and In re Gosteli, 872 F.2d 1008, 1012,
10 USPQ2d 1614, 1617 (Fed. Cir. 1989). An invention is completed
when there is conception and a reduction to practice of the
invention. Dunn v. Ragin, 50 USPQ 472, 474, (Bd. Pat. Inter.
1941).
For the reasons that follow, Tracy I does establish an
actual reduction to practice prior to the effective filing date
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