Appeal 2007-2003
Application 09/726,589
1 § 1.131is ineffective for providing no evidence concerning the country in which
2 the invention was made.
3 The Examiner secondly raises the issue of diligence. The Declarant state
4 that they were diligent from July 2, 1999 to December 1, 1999. No other facts,
5 dates, or activities are alleged. Diligence is a question of fact. In re Jolley, 308
6 F.3d 1317, 1326, 64 USPQ2d 1901, 1908 (Fed. Cir. 2002). A party that seeks to
7 establish reasonable diligence must account for the entire period in which diligence
8 is required; that period commences from just prior to the date upon which its
9 opponent entered the field until the date of the party’s reduction to practice, either
10 actual or constructive. Gould v. Schawlow, 363 F.2d 908, 919, 150 USPQ 634,
11 643 (CCPA 1966). Evidence which is of a general nature to the effect that work
12 was continuous, and which has little specifics as to dates and facts does not
13 constitute the kind of evidence required to establish diligence in a critical period.
14 Kendall v. Searles, 173 F.2d 986, 993, 81 USPQ 363, 369 (CCPA 1949). In a 37
15 C.F.R. § 1.131 context see In re Mulder, 716 F.2d 1542, 1545, 219 USPQ 189, 193
16 (Fed. Cir. 1983), where the want of any showing of diligence during a two day
17 critical period prevented an applicant from establishing a date of invention prior to
18 a publication cited as prior art.
19 In this instance, there is simply no evidence of specific dates or activities
20 that establish that Appellants were diligent in making the invention either based on
21 the activities of a legal representative or through their own acts or acts that inure to
22 them.
23 As to the last issue raised by the Examiner, that is that Appellants and
24 Sander are claiming the same patentable invention under 37 C.F.R. § 1.131, we
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