Appeal No. 2005-2512
Reexamination Control No. 90/006,431
Id. at 455, 215 USPQ at 18. The court held that the article created a substantial
question of inventorship because the research work disclosed therein, which was the
same subject matter disclosed and claimed in the application, was described as the
work of all of the authors:
What we have in this case is ambiguity created by the printed publication.
The article does not tell us anything specific about inventorship, and
appellant is only one of three authors who are reporting on scientific work
in which they have all been engaged in some capacity at the Harvard
Medical School. It was incumbent, therefore, on appellant to provide a
satisfactory showing which would lead to a reasonable conclusion that he
is the sole inventor.
Katz, 687 F.2d at 455, 215 USPQ at 18 (emphasis added; footnote omitted). Despite its
conclusion that the article raised a question of inventorship, the court did not require
supporting declarations by Katz’s coauthors. Instead, the court considered it sufficient
that Katz’s Rule 132 declaration (a) “reaverred . . . that he is the inventor of the subject
matter described and claimed in his application and also that disclosed in the [reference
article],” id., and (b) explained that his coauthors were students who were working under
his direction and supervision. Id. The Katz court was thus not presented with, and did
not address, the question of whether supporting declarations would have been required
if the reference article had named no authors.
The examiner’s underlying concern may be that Ho, not being an author of the
RailMill documents, lacks first-hand knowledge of facts to support his testimony that the
subject matter in those documents was derived from him and Tuan. We do not agree.
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