Appeal 2007-1335
Application 10/449,558
consistent with the historical origin of constructive reduction to practice as a
status triggered by the inventors’ act of filing their application. See Euth, 70
F.2d at 114, 21 USPQ at 234.
The 1.131 issue
Here, the previously filed ‘246 Application is not specifically
referenced in the Specification of the ‘558 Application. Nonetheless,
Appellants argue that Rule 1.131 enables them to rely on the ‘246
Application as a constructive reduction to practice.
According to Rule 1.131 (2004):
(a) When any claim of an application . . . is rejected, the
inventor of the subject matter of the rejected claim . . . may
submit an appropriate oath or declaration to establish invention
of the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based.
Appellants take the position that the constructive reduction to practice
in their earlier filed ‘246 application can be used “to establish [in the ‘558
Application] invention of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based” in satisfaction of Rule
1.131.
Analysis
We acknowledge that the facts of this case are unique: the same
inventors – Palmaz and Schatz – filed an earlier application (the ‘246
Application) on October 4, 1988 disclosing the same invention claimed in
the instant Application. Were the description of the claimed invention in the
previously filed ‘246 Application compliant with 35 U.S.C. § 112, it would
certainly serve as a construction reduction to practice of it – had it also been
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