Appeal 2007-1268
Application 10/177,845
Interferences (Board) and petitionable matters for the Director of the U.S.
Patent and Trademark Office (Director) should be carefully observed.").
We agree with Appellants that the Examiner was incorrect to state in
the Advisory Action that the Section 132 Declaration was untimely
submitted. The new ground of rejection under 35 U.S.C. § 103(a) was first
presented in the Final Office Action, and therefore the first opportunity for
Appellants to submit the Section 132 Declaration was in the Section 116
Amendment. This error, however, is harmless. Appellants did not petition
to have the Examiner's decision reversed. Furthermore, the Examiner
actually considered the merits of the Section 132 Declaration. In particular,
the Examiner addressed the merits of the Section 132 Declaration somewhat
obliquely in the Advisory Action (see Finding of Fact 8) and more directly
in the Answer (see Finding of Fact 11). We agree with the Examiner that
the Rule 132 Declaration was not effective to disqualify Ohkado as a
reference under 35 U.S.C. § 103(c) because it did not remove Ohkado as
prior art under 35 U.S.C. § 102(a).
Appellants argue that Ohkado is not eligible as a reference under
35 U.S.C. § 102(a). (Brief 6-7.) In an apparent attempt to prove earlier
invention, Appellants submitted for the first time on appeal a single page of
an invention disclosure in the Evidence Appendix of the Brief. (Brief 7, 13;
Finding of Fact 10.) This evidentiary submission was untimely.
37 C.F.R. § 41.33(d)(2) ("All other affidavits or other evidence filed after
the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not
be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and
41.50(b)(1)."). However, the issue of untimeliness has been rendered moot
because the Examiner considered the new evidence in the Answer and
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013