Appeal 2007-2003
Application 09/726,589
1 Clams 1, 4, 8, 20, 24, and 25 stand rejected under 35 U.S.C. § 102(e) as
1 being unpatentable over Sander.
2
3 ISSUE
4 The issue raised by this appeal is the Examiner’s rejection of the claims on
5 appeal as lacking novelty over Sander. Subsidiary issues are raised by Appellants
6 resort to a Declaration under 37 C.F.R. § 1.131 to antedate the Sander reference.
7 These issues include whether Appellants’ claims on appeal and Sander are directed
8 to the same patentable invention, and whether Appellants’ § 1.131 Declaration is
9 ineffective for lack of proof of diligence as alleged by the Examiner.
10 FINDINGS OF FACT
11 Appellants have not argued that the subject matter of Sander fails to
12 anticipate the subject matter of Appellants’ claims on appeal. Therefore we hold,
13 with the Examiner, that the subject matter of Appellants’ claims on appeal lacks
14 novelty over the subject matter disclosed by Sander.
15 Instead, Appellants argue that the Declaration submitted under 37 C.F.R. §
16 1.131 provides evidence which antedates the effective date of the Sander
17 disclosure. The Examiner argues that the Rule 131showing is ineffective for three
18 reasons. First, the Examiner states that the Declarants have not provided evidence
19 that the invention was made in a country that is a signatory to the NAFTA or WTO
20 treaties. We agree with the Examiner that it is incumbent upon Appellants to
21 provide evidence that the invention was made in such a country. We find it to be
22 little burden on the Declarants to state what country they did their work in.
23 Consequently, we sustain the Examiner’s holding that the showing under 37 C.F.R.
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