Reexamination Control No. 90/005,742
Patent 5,253,341
1 prior to Yurt's January 7, 1991, effective date under 35 U.S.C. § 102(e)(2) coupled with
2 reasonable diligence from prior to that date up to appellant's April 11, 1991, filing date.
3 A showing of prior invention must address every limitation of the rejected claim or
4 claims:
5 (a) When any claim of an application or a patent under
6 reexamination is rejected, the inventor of the subject matter of the rejected
7 claim, the owner of the patent under reexamination, or the party qualified
8 under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or
9 declaration to establish invention of the subject matter of the rejected
10 claim prior to the effective date of the reference or activity on which the
11 rejection is based.
12
13 37 CFR § 1.131(a) (2006). As noted by the examiner, Final Action at 202, para. 367, these
14 declarations were filed in order to overcome the previous (now withdrawn) rejections of claims
15 93, 95, 96, 99, 100, and 102-04 based on Yurt, not the rejections of claim 11, the sole claim now
16 rejected over that reference. As a result, these declarations make no attempt to explain how the
17 facts recited therein demonstrate either (a) prior conception of the subject matter of claim 11,
18 including its recitation of using two compression techniques to compress the response to the
19 query (not recited in any of claims 93, 95, 96, 99, 100, and 102-04), or (b) the exercise of
20 reasonable diligence in reducing that claimed subject matter to practice. Nor does the brief offer
21 such an explanation. See In re Borkowski, 505 F.2d 713, 718, 184 USPQ 29, 33 (CCPA 1974)
22 (Rule 131 showing held deficient because “[t]he original and supplemental affidavits together
23 with the accompanying comments do not adequately explain what facts or data appellant is
24 relying upon to show a completion of the invention prior to April 13, 1961.”).
25
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