Appeal 2007-2241
Application 09/768,990
1 We find that the appeal is not in condition for a decision. This
2 application is remanded to the Examiner to address the matters specified
3 below and to take action deemed appropriate.
4 The Appeal Brief (filed May 9, 2006) and Answer (mailed Jun. 14,
5 2006) define the issue as whether an affidavit Appellant filed under
6 37 C.F.R. § 1.131 (filed Dec. 12, 2005) is sufficient to demonstrate prior
7 invention by Appellant and thereby render Batachia legally unavailable as
8 prior art under 35 U.S.C. § 102(e). Given that Appellant has not been
9 afforded an opportunity to overcome deficiencies in the 131 affidavit, it is
10 premature for the Board to decide this issue.
11 Batachia was first introduced as prior art and applied, in combination
12 with Alberts and Tso, against the claims under 35 U.S.C. § 103(a) in the
13 Final rejection (mailed Oct. 31, 2005). Appellant responded to the Final
14 rejection with an affidavit (Dec. 12, 2005) pursuant to 37 C.F.R. §1.131 to
15 evidence prior invention in an attempt to render Batachia legally unavailable
16 as prior art under 35 U.S.C. § 102(e). An Advisory action then issued
17 (mailed Dec. 22, 2005) indicating that the 131 affidavit was ineffective to
18 overcome Batachia because, according to the Examiner, Batachia was
19 legally available as prior art under 35 U.S.C. § 102(b). The Advisory Action
20 also included a discussion briefly explaining that the 131 affidavit was
21 deficient for failing to show prior reduction to practice, conception, and
22 diligence. During a subsequent interview (held Feb. 1, 2006; recorded in the
23 Interview Summary, mailed Feb. 17, 2006), the Examiner agreed that
24 Batachia did not qualify under 35 U.S.C. § 102(b), thereby conceding that
25 Batachia qualified as prior art under 35 U.S.C. § 102(e). The Examiner
26 repeated, again briefly, that the 131 affidavit was deficient for failing to
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