Appeal No. 2006-2811 Page 7
Application No. 09/973,646
mentioned Rule 132 declarations that they are the inventors of the claimed subject
matter, which is exemplified by these examples. Based on the totality of the evidence
provided in the record, we conclude that the Rule 131 declaration is sufficient to
establish that the examples presented in JP 11-95712 were actually reduced to practice
in Japan as of the filing date of JP 11-95712, which is before the effective filing date of
Gallucci.
The examiner argues that “the certified English translation [of JP 11-95712] is not
evidence of reduction to practice. Rather, it only serves to confirm evidence of
conception,” which, in the absence of a demonstration of due diligence, is insufficient to
establish an earlier date of invention. Examiner’s Answer, page 12. In support of this
position, the examiner relies on In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir.
1983). However, Costello relates to whether a prior application that had been
abandoned provides a constructive reduction to practice. We agree with Appellants that
Costello is not relevant to whether a prior application can be used as evidence of an
actual reduction to practice. Appeal Brief, page 8.
We are aware of no reason why an application cannot be used as evidence of an
actual reduction to practice. In the present case, we conclude that the prior application,
together with the Rule 131 declaration, provides sufficient evidence of an actual
reduction to practice of the examples described in the prior application, prior to the
effective filing date of Gallucci. Thus, we agree that Appellants have presented
sufficient evidence that Gallucci is not prior art with regard to claims 1, 3-7, and 12.
Appellants do not assert that they have antedated Gallucci with respect to the
rejection of claims 16-19, 22, and 23. These claims are directed to the composition of
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