Interference No. 104,403
In an ORDER dated February 19, 2002 (Paper No. 119) (“Feb.
19th order”) an Administrative Patent Judge assigned to this interference
stated at pages 2 to 3:
. . . In accordance with the above discussion, Rosenthal’s
brief should include a section regarding Magee’s
preliminary motion 3. Specifically, Rosenthal’s opposition
filed in its brief should discuss the significance of any Rule
131 affidavit it intends to rely upon.
In the Opening Brief of the Junior Party Rosenthal, the junior
party does include a section on the Magee ‘525 reference at page 25.
In this section, the junior party states that the reduction to practice relied
upon in the filed 131 affidavit (Rosenthal record page 277) is the same
reduction to practice relied upon in the Rosenthal priority case and that
it makes no difference whether the 131 affidavit or the priority case is
utilized to swear behind the Magee ‘525 reference.
We note that evidence which is sufficient to prove reduction to
practice for priority purposes is not necessarily sufficient to remove a
reference from consideration in accordance with 37 CFR § 1.131.
Reduction to practice to establish priority requires only that the
evidence proves that the party constructed an embodiment that met
each limitation of the count and that the embodiment worked for its
intended purpose. Slip Track Systems Inc. v. Metal-Lite Inc., 304 F.3d
1256, 1265; 64 USPQ2d 1423, 1429 (Fed. Cir. 2002). Section 1.131
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