Appeal No. 2006-1754
Application No. 10/046,940
diligence from prior to said date to a subsequent reduction to practice or to the filing of
the application.
In the Examiner’s Answer (mailed Oct. 19, 2005), the examiner did not respond
to appellants’ arguments in the Brief (filed Jul. 28, 2005) regarding why the 131
declaration should be deemed effective to antedate Patrizio. According to the Answer
(at 2), “[t]his issue relates to petitionable subject matter under 37 CFR 1.181 and not to
appealable subject matter. See MPEP § 1002 and § 1201.”
REASON FOR REMAND
Contrary to the indication in the Answer, review on the merits of a 37 CFR
§ 1.131 affidavit or declaration is by appeal to the Board of Patent Appeals and
Interferences. MPEP § 715.08 (Eighth Ed., Rev. 4, Oct. 2005) (section identical to Rev.
3, Aug. 2005).
Accordingly, this application is remanded to the examiner for further
consideration of a rejection. See 37 CFR § 41.50(a)(1); MPEP § 1211.01. If a
supplemental examiner’s answer is written in response to this remand, absent entry of a
new ground of rejection in said answer, the supplemental answer must be limited to
addressing issues relating to the 131 declaration.
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