Appeal No. 2006-2811 Page 6
Application No. 09/973,646
the filing date of JP 11-95712, that is, April 2, 1999.” Id. Appellants argue that, in the
Rule 131 declaration, “JP 11-95712 was used to establish an actual reduction to
practice. . . . Since JP 11-95712 was not abandoned, suppressed or concealed, it can
serve as evidence of a reduction to practice if it is shown that (1) an embodiment was
constructed that met every element of the subject claims and (2) the embodiment
operated for its intended purpose. . . . As shown in the verified English-language
translation of JP 11-95712, Examples 1-5 produced molded articles from the
thermoplastic resin compositions which clearly fall within the scope of claims 1, 3-7 and
12.” Id., page 8.
We conclude that the Rule 131 declaration provides sufficient evidence of an
actual reduction to practice of the examples included in JP 11-95712. The filing of an
application is not an actual reduction to practice. However, the information provided in
an application can be used as evidence of an actual reduction to practice. In the
present case, JP 11-95712 includes examples that appear to be within the scope of
claims 1, 3-7, and 12.
The Rule 131 declaration does not expressly state that these examples were
conducted by or under the direction of the present inventors in Japan prior to the filing of
JP 11-95712. However, the Rule 131 declaration states that it is being presented “to
establish completion of the invention . . . in a WTO member country, Japan, at a date
prior to August 27, 1999, the earliest U.S. effective filing date of . . . Gallucci,” and that
the inventors are citizens and residents of Japan. In addition, the examples in
JP 11-95712 are in the past tense and include numerical results, indicating that they are
actual rather than prophetic examples. Finally, the inventors have stated in the above-
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