Appeal No. 2002-2055 Page 4
Application No. 09/727,547
Appellants’ principal contention is that the filing of the later abandoned
original application constitutes a constructive reduction to practice of the
invention. Appellants cite no authority, nor can they, to support their
argument. It has long been settled, and we continue to approve the rule,
that an abandoned application, with which no subsequent application was
copending, cannot be considered a constructive reduction to practice. It is
inoperative for any purpose, save as evidence of conception.
While the filing of the original application theoretically constituted a
constructive reduction to practice at the time, the subsequent
abandonment of that application also resulted in an abandonment of the
benefit of that filing as a constructive reduction to practice. The filing of
the original application is, however, evidence of conception of the
invention. Appellants were able to reduce the invention to writing. That
writing therefore constitutes documentary evidence that appellants had
conceived the invention as of the filing date. As the Board found,
however, appellants did not establish diligence in reducing the invention to
practice. Appellants do not contest that finding. Thus the evidence is not
sufficient to antedate Cereijo [the reference] under Rule 131.
( 717 F.2d at 1349 and 1350, 219 USPQ at 391 and 392)
Application of the above reasoning by the court to the situation before us makes
it clear that the failure on the part of the appellants to establish diligence over the period
between the abandonment of the provisional application and the effective filing date of
the present application allows Comita to stand as a reference against the claims.
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