Appeal 2007-1335
Application 10/449,558
Appellants argue that In re Costello, 717 F.2d 1346, 219 USPQ 389
(Fed. Cir. 1983) recognizes that Rule 1.131 is available “[e]ven if an
applicant is unable to secure an effective filing date previous to the effective
date of a prior art reference under section 120” (Br. 5). To the extent that
Costello describes Rule 1.131 as supplying a mechanism for proving a date
of invention prior to the effective date of a reference, we agree. However,
we find no basis in Costello to support Appellants’ position that an earlier
filed application can serve as a constructive reduction to practice for an
invention claimed in a later filed application unrelated by 35 U.S.C. § 120.
In Costello, the Appellants sought to rely on an earlier filed
application which had been abandoned prior to the effective date of a
reference as a constructive reduction to practice for the purpose of
antedating a reference under Rule 1.131. The court held “that an abandoned
application, with which no subsequent application was copending, cannot be
considered a constructive reduction to practice. It is inoperative for any
purpose, save as evidence of conception.” Costello, 717 F.2d at 1350,
219 USPQ at 391. Appellants distinguish the facts in this appeal from
Costello because Appellants’ previously filed ‘246 Application was not
abandoned, but was copending with the later filed parent application of the
‘558 Application. However, Costello does not state that had the previously
filed application been copending, it could have served as a constructive
reduction to practice; that issue was not before the court.
requirement of 35 U.S.C. § 120 that an application “contain a specific
reference to the earlier filed application” in order to be entitled to the benefit
of its filing date.
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