Appeal 2007-1335
Application 10/449,558
The Examiner relies on the following evidence of unpatentability:
Pinchuk U.S. 5,226,913 Jul. 13, 1993
Claims 7-11, 13-16, 19-22, 26, and 30-34 stand rejected under 35
U.S.C. § 102(e) as anticipated by Pinchuk (Br. 2; Answer 31). Appellants do
not challenge the Examiner’s prima facie case of anticipation. Instead,
during prosecution before the Examiner, the co-inventors submitted
Declarations under 37 C.F.R. § 1.131 (“Rule 1.131”) to antedate the Pinchuk
patent (Br. 3). They assert that the only issue to be resolved in this appeal is
whether the Declarations are effective to antedate Pinchuk (Br. 4). For this
reason, we find that Appellants concede to the Examiner’s prima facie case
of anticipation. Therefore, we limit our discussion to Appellants’ evidence
submitted under 37 C.F.R. § 1.131 and their arguments relating to it.
ISSUE ON APPEAL
Appellants contend that a previously filed co-pending, but unrelated
application, is a constructive reduction to practice of the claimed invention
sufficient to antedate Pinchuk. They provided Rule 1.131 Declarations by
the two co-inventors attesting to this fact (Br. 3).
The Examiner contends that the Rule 1.131 Declarations are
insufficient to antedate Pinchuk because “[t]he filing of the application of a
separate patent to the inventors does not constitute a reduction to practice in
the present application” (Answer 4).
We frame the sole issue in this appeal as follows:
1 In the Answer, it is stated that claim 29 is rejected over Pinchuk. However,
claim 29 had been canceled (Amendment dated Feb. 28, 2005).
2
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