Appeal 2007-1335
Application 10/449,558
Constructive reduction to practice of a claimed invention does not
have a separate life of its own; it is not a certificate of invention that the
inventors can carry as proof of invention to any proceeding in which they
happen to be involved. The ‘246 Application stands on the same footing as
a publication of an article, a drawing or memorandum, none of which can
serve as constructive reduction to practice even when authored by the same
inventors listed on the patent application. Chisum on Patents §10.05[1]; In
re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982).
For a later filed application to have the same priority date as a
previously filed application – i.e., to rely on the previously filed application
as a constructive reduction to practice – it must conform to the requirements
of 35 U.S.C. § 120 that it be copending and contain a specific reference to
the previously filed application. We know of no case where a constructive
reduction to practice of a previously filed application inured to the benefit of
a later filed application which was not entitled to the effective date of the
previously filed application under either 35 U.S.C. § 119 or 35 U.S.C. §
120.4 We also do not find it sensible to interpret Rule 1.131 in such a way
that it would conflict with 35 U.S.C. § 120.5
4 See In re Strain, 187 F.2d 737, 89 USPQ 156 (CCPA 1951) and Manny v.
Garlick, 57 USPQ 377, 387 (CCPA 1943) for a discussion of cases where a
sole inventor sought to rely on a previously filed copending application on
which he was listed as a co-inventor. For the benefit of 35 U.S.C. § 119
under Rule 1.131, see In re Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed.
Cir. 1983).
5 “Congress did not set agencies free to disregard legislative direction in the
statutory scheme that the agency administers.” Heckler v. Chaney, 470 U.S.
821, 833 (1985).
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