Appeal 2007-1335
Application 10/449,558
reduction to practice of the invention claimed in” the ‘558 Application “prior
to the effective date of” Pinchuk (Schatz Dec. 2).
DISCUSSION
In their Rule 1.131 Declaration, Appellants intend to antedate the
Pinchuk reference by relying on the constructive reduction to practice of
their earlier filed, but unrelated, ‘246 Application. Appellants make no
attempt to claim priority to the ‘246 Application under 35 U.S.C. § 120.
Instead, Appellants contend that compliance with 35 U.S.C. § 120 is not
necessary because Rule 1.131 permits them to rely on the previously filed
application as a constructive reduction to practice of the subject matter
claimed in this application (Br. 5).
Constructive reduction to practice
Because the effect of a “constructive reduction to practice” is in
dispute in this appeal, we begin our analysis with a discussion of its legal
significance and relationship with 35 U.S.C. § 120.
The doctrine of constructive reduction to practice allows an inventor
to rely on the filing date of an application which discloses the claimed
invention in compliance with 35 U.S.C. § 112 as a reduction to practice.
Chisum on Patents §10.05[1]. The inventor’s act of filing the § 112
compliant application creates the presumption that the invention was made
at the time the application was filed. Automatic Weighing Machine Co. v.
Pneumatic Scale Corp., 166 F. 288 (1st Cir. 1909); Chisum on Patents
§10.05[2]. Although an invention may not have been actually “perfected
and adapted to use,” filing a complete and allowable application is a
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