Appeal No. 2002-2055 Page 3
Application No. 09/727,547
applied as a reference. They cited no legal precedent supporting this conclusion. We
decided that the argument was contrary to 35 U.S.C. § 119(e)(1) and 35 U.S.C. § 120.
We have carefully reviewed the arguments presented in the Request for
Rehearing, which can be summarized as follows: (1) “the properly filed provisional
application is a constructive reduction to practice for all time, regardless of the
abandonment thereof” (Request, page 2); (2) “there is nothing in the statute to later void
such reduction to practice even though the provisional application be abandoned”
(Request, page 3); and (3) this removes Comita as an available reference (Request,
page 3). However, we are not persuaded that our decision was in error, and we shall
not modify it.
Support for our conclusion is provided by our reviewing court in In re Costello
and McClean, 717 F.2d1346, 1349, 219 USPQ 389 (Fed. Cir. 1983), which was cited by
the examiner on page 8 of the Answer. The situation before the court was analogous to
that before us, in that while the appellants did not satisfy the requirements of the
Section 120, they still wished to eliminate a reference by virtue of a constructive
reduction to practice based upon an earlier abandoned application. The Court makes
the following statements, which support our conclusion in the instant case:
Rule 131 requires proof of either “reduction to practice prior to the
effective date of the reference, or conception of the invention prior to the
effective filing date of the reference coupled with due diligence from said
date to a subsequent reduction to practice or to the filing of the
application.”
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007