1600 Biotechnology and Organic Chemistry
Ex Parte Wenger et al 10/490,565 PRATS 103(a) NOVOZYMES NORTH AMERICA, INC.
Examiner Name:
FORD, ALLISON M
1700 Chemical & Materials Engineering
Ex Parte Lin et al 10/981,926 KRATZ 103(a) ZILKA-KOTAB, PC-IBM
Examiner Name:
MCDONALD, RODNEY GLENN
2100 Computer Architecture and Software
Ex Parte Martin 10/754,070 C. THOMAS 112(1)/102(b) WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, L.L.P.
Examiner Name:
PHAM, HUNG Q
REEXAMINATION
ex parte
EXAMINER REVERSED
3900 Central Reexamination Unit (CRU)
Ex parte TEST.COM 90/007,997 6,513,042 TURNER 103(a) Cynthia S. Murphy RENNER OTTO BOISSELLE & SKLAR Jason Schultz, Staff Attorney Electronic Frontier Foundation
Examiner Name:
CHOI, WOO H
An Applicant’s declaration must clearly explain the evidence and exhibits, pointing out exactly what facts are established and relied on by applicant to show conception and reduction of the invention to a practical form:
The affidavit or declaration and exhibits must clearly explain which facts or
data applicant is relying on to show completion of his or her invention prior to
the particular date. Vague and general statements in broad terms about what the
exhibits describe along with a general assertion that the exhibits describe a
reduction to practice “amounts essentially to mere pleading, unsupported by
proof or a showing of facts” and, thus, does not satisfy the requirements of 37
CFR 1.131(b).
MPEP § 715.07 (I) (quoting In re Borkowski, 505 F.2d 713, 718 (CCPA 1974)). See also In re Harry, 333 F.2d 920, 922 (CCPA 1964) (Where the affidavit “asserts that facts exist but does not tell what they are or when they occurred.”). A declaration exhibit need not support all claimed limitations; however, any missing limitation must supported by the declaration itself. MPEP § 715.07 (I) (citing Ex parte Ovshinsky, 10 USPQ2d 1075, 1077 (BPAI 1989)).
“[F]or the purpose of antedating [a] reference under Rule 131, it is sufficient that appellant has shown a reduction to practice of his basic invention, which showing will also suffice as to claims differing therefrom only in details which are obvious to one of ordinary skill in the art.” In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974). The court subsequently clarified that Spiller “nowhere weakens the requirement, under Rule 131, of a factual showing of completion of the invention before the critical date.” In re Borkowski, 505 F.2d at 719.
Borkowski, In re, 505 F.2d 713, 184 USPQ 29 (CCPA 1974) . . . . . . . . . . . . . 715.07
Harry, In re, 333 F.2d 920, 142 USPQ 164 (CCPA 1964). . . . . . . . . . . . . . . . . .715.07, 2138.06
Ovshinsky, Ex parte, 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989) . . . . . . . . . . . . 715.07
Spiller, In re, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) . . . . . . . . . . . . . . .715.02, 715.03
While the Examiner may be correct regarding the requirements for 37 CFR § 1.131 as it applies to regular examination, this is not the case once a patent application has issued and then subsequently under reexamination, as is the case here. Specifically, rule 37 CFR § 1.131(a) states:
(a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47 may submit an appropriate oath or declaration. . . .
37 C.F.R. § 1.131 (2009). (emphasis added).
NEW
REVERSED
Ex Parte Crnkovich
Ex Parte Wenger et al
AFFIRMED-IN-PART
Ex Parte Alexander et al
AFFIRMED
Ex Parte Agazzi
Ex Parte Isenstein et al
Ex Parte Meythaler
Ex Parte Nelson
Ex Parte Sezan et al
