Ex Parte MEGY - Page 12




               p. 2, ý 3(c). The letter bears the date August 21, 1997. Lane Letter 1.8 Dr. Heshmatpour argues that                                  
               the written description shows the "essence" of his invention. Paper 55, p. 2.                                                         
                        Dr. Heshmatpour also relies upon a second letter sent to the patent attorney including                                       
               attached sketches. He testifies:                                                                                                      
                                 (d) Shortly thereafter, and still prior to October 16, 1997, 1 sent Mr. Lane                                        
                                 another letter regarding the same matter and enclosed therewith rough                                               
                                 sketches of apparatuses for practicing my inventive process. True and correct                                       
                                 copies of the letter and enclosures are attached hereto and marked as Exhibit                                       
                                 2.                                                                                                                  
               Heshmatpour Declaration, p. 2, ý 3(d). The letter bears the date August 30, 1997, and includes                                        
               handwritten attachments including drawings and some text identifying various components shown                                         
               in the drawings. Lane Letter 2.'                                                                                                      
                        The content of the documents are not explained to us in detail as required by 37 CFR                                         
               § 1.671 (f). We have endeavored to review the documents on our own to ascertain what they show.                                       
               Having undertaken this review, we conclude that the documents are insufficient to prove a                                             
               conception of the invention.                                                                                                          
                        These two documents alone or in combination fail to describe an embodiment including all                                     
               the features of at least one of the alternatives of the count. The documents disclose neither the                                     
               compositional limitation for titanium nor the molten aluminum temperature required by the                                             
               alternatives of the count. In particular they do not show the specified amounts of titanium required                                  
               by the count alternatives of Megy Claims 1, 17, 35, 44 and Heshmatpour Claim 21 (1-1500, 1-3000                                       
               or 1-200,000 ppm) or (2) molten aluminum at a temperature of 1200* to 1500'F required by the                                          
               count alternatives of Megy Claims 17 and 45. While Dr. Heshmatpour argues that these documents                                        
               show the "essence" of his invention (Paper 55, p. 2), proof of conception requires evidence showing                                   



                        8 Attachment to Paper 53. A redacted copy is also of record in the Heshmatpour involved application                          
               as Exhibit I to the Rule 1.608(b) Evidentiary Declaration I of Bahman Heshmatpour. Application 09/020,616, Paper                      
               7).                                                                                                                                   
                        9 Attachment to Paper 53. A redacted copy is also of record in the Heshmatpour involved application                          
               as Exhibit 2 to the Rule 1.608(b) Evidentiary Declaration I of Bahman Heshmatpour (Application 09/020,616, Paper                      
               7).                                                                                                                                   
                                                                     -12-                                                                            








Page:  Previous  5  6  7  8  9  10  11  12  13  14  15  16  17  18  19  Next 

Last modified: November 3, 2007