Appeal No. 2006-2811 Page 3
Application No. 09/973,646
elastomer and 97.5 to 92% by weight of tungsten powder, . . . that we disclosed [this]
thermoplastic resin . . . to the inventors of U.S. Patent No. 6 364 422 [i.e., Sakaki],
and that the use of [this] thermoplastic resin composition . . . in U.S. Patent
No. 6 364 422 . . . was based solely on our disclosure of the subject matter described
in the [present] application.” Pages 1-2. One of the Rule 132 declarations is signed by
inventor Kazuo Haruta; the other Rule 132 declaration is signed by the three other
inventors.
The examiner argues that these declarations were “not successful in removing
Sakaki et al. as a reference against the present claims.” Examiner’s Answer, page 8.
In particular, the examiner argues that “there is no indication in either declaration that
the ‘we’ collectively refers to all four inventors. . . . Rather, the 10/14/03 declaration
states that Sakaki, Mizoguchi, and Nishikawa are the true inventors . . . while the
2/26/04 declaration states that Haruta is the true inventor.” Id., pages 8-9. Thus, the
examiner argues that there “is no disclosure in either declaration that Sakaki,
Mizoguchi, Nishikawa, and Haruta, the inventors of the present application, are the true
inventors.” Id., page 9.
We agree with the examiner that the Rule 132 declarations could be better
written and that a more careful construction of these documents may have avoided the
necessity of an appeal. In particular, we agree with the examiner that use of the term
“we” in, for example, the statement that that “we are the true inventors of the
thermoplastic resin composition” is somewhat ambiguous. However, Appellants stated
that the declaration signed by Mr. Haruta was submitted separately because he “was
not able to sign the [first Rule 132] Declaration because he was hospitalized and
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