Appeal No. 2003-0190
Application No. 08/515,964
contrary to the view of the Examiner, it is quite apparent to us
that the showing in the referenced sections of the Takano patent,
in and of itself, fails to provide the requisite proof that the
claimed invention was in fact made by patentee Takano, and that
Appellants Ono and Komatsu derived the invention from Takano.
Lacking the noted proof, the rejection under 35 U.S.C. § 102(f)
is not sound and cannot be sustained.
We also do not sustain the Examiner’s rejection of claims 1-
11 under 35 U.S.C. § 102(g) which states that a person is
entitled to a patent unless before the applicant's invention
thereof the invention was made ... by another who had not
abandoned, suppressed, or concealed it. In determining priority
of invention there shall be considered not only the respective
dates of conception and reduction to practice of the invention,
but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to
conception by the other. While more commonly applied to
interferences, section 102(g) is applicable to prior invention
situations other than in the context of an interference. See
New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561,
1566, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990).
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