Appeal No. 2006-2811 Page 5
Application No. 09/973,646
is that the present applicants invented the composition of instant claim 1, while the
applicants in Sakaki invented a wheel balance weight made from that composition.
We agree with Appellants that the statements in the Rule 132 declarations do not
contradict each other. The declarations state that the inventors of the present
application invented a thermoplastic resin composition and molded articles formed from
the resin composition. The declarations do not state that the inventors of the present
application invented the balance weight claimed in Sakaki. Thus, the statement that the
inventors of Sakaki invented the balance weight does not contradict the statements in
the declarations that the present inventors invented the thermoplastic resin composition
and molded articles formed from the resin composition.
The Rule 132 declarations adequately show that Sakaki is not prior art with
respect to the present claims. Therefore, we reverse the rejection of claims 1, 3-7, 12,
16-19, 22, and 23 under 35 U.S.C. § 102(e) over Sakaki.
3. Gallucci
The examiner has rejected claims 1, 4-7, 16-19, 22, and 23 under 35 U.S.C.
§ 102(e) as anticipated by Gallucci.2 The examiner argues that Gallucci discloses a
composition that anticipates claim 1. Examiner’s Answer, page 4.
Appellants argue that “the inventions of Claims 1, 3-7 and 12 were actually
reduced to practice by the Applicants in Japan” as of April 2, 1999. Appeal Brief, page
6. Specifically, Appellants argue that the Declaration under 37 CFR § 1.131 of record
“establishes a reduction to practice of the subject matter of Claims 1, 3-7 and 12 as of
2 Gallucci et al., U.S. Patent No. 6,300,399 B1, which issued October 9, 2001, from an application filed
November 18, 1999.
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