Appeal No. 2005-2512
Reexamination Control No. 90/006,431
Furthermore, while the examiner (Ans. 9-11) quotes extensively from MPEP § 716.10,
which discusses a number of cases involving Rule 132 declarations, he does not
explain which case he believes provides support for such a requirement. We have,
however, considered Katz, which is the most recent Federal Circuit decision to address
the merits of a Rule 132 attribution showing, and for the reasons given below fail to see
how it supports such a requirement.
Katz involved a rejected under 35 U.S.C. § 102(a) for anticipation by an article
which “fully describes the claimed invention,” Katz, 687 F.2d at 452, 215 USPQ at 15,
and named as coauthors the sole applicant (Katz) and two other individuals. The board
affirmed the examiner’s holding that Katz’s Rule 132 declaration was insufficient in the
absence of supporting declarations from the other coauthors. Id. at 453, 215 USPQ at
16. The court began its analysis by explaining that a determination of whether an article
raises a substantial question of inventorship depends not only on its authorship but on
its content, nature, and circumstances of publication:
As an initial matter, we hold that authorship of an article by itself
does not raise a presumption of inventorship with respect to the subject
matter disclosed in the article. Thus, co-authors may not be presumed to
be coinventors merely from the fact of co-authorship. On the other hand,
when the PTO is aware of a printed publication, which describes the
subject matter of the claimed invention and is published before an
application is filed (the only date of invention on which it must act in the
absence of other proof), the article may or may not raise a substantial
question whether the applicant is the inventor. For example, if the author
(whether he is the applicant or not) specifically states that he is describing
the work of the applicant, no question at all is raised. The content and
nature of the printed publication, as well as the circumstances surrounding
its publication, not merely its authorship, must be considered.
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