Judge Schall’s dissent argued that the Board evaluated diligence using the correct legal standard: “As I read them, our cases turn on whether evidence supports a satisfactory explanation for periods of inactivity.” The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.Robert Schaffer is an intellectual property partner at Troutman Sanders.Question asking who can sign a 1.132 petition showing that a previous invention was not by another. If the prior art is a foreign patent or app (it could even be owned by the same applicant or the same assignees) that was filed 12 months prior to the U. (715.04 who can file the 37 USC 1.131 affidavit) 1.The subject matter of the question is “Application A” and “Patent X”. Also tested: Know what responses overcome certain rejections such as when 1.131 and 1.132 affidavit appropriate – MPEP 715.01. All of the inventors of the subject matter claimed 2.
filing dates, including certain international filing dates. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. The answer choices included variations of: declarations or statements from:2 answers were accepted because the inventor is in a position to have the best knowledge of ownership of the invention – or something along those lines – but the original correct answer was the attorney can send in a statement. MPEP 715.05 WHO MAY MAKE AFFIDAVIT OR DECLARATION The following parties may make an affidavit or declaration under 37 CFR 1.131 (A)All the inventors of the subject matter claimed. When an applicant cannot swear behind a 1.131 or 1.132 affidavit. patent or application (102(e) prior art) claims the same invention as the app under question. An aff/decl by less than all the inventors where it is shown that less than all of the named inventors on the app actually invented the subject matter being sworn back to. When there is a 37 CFR 1.47 petition that is accepted (when the inventor refuses to sign or cannot sign) then the aff can be signed by the 37 CFR 1.47 applicant, or by legal representative. When it is not possible to produce the inventor, then the assignee or other party with proprietary interest may sign.(B)An affidavit or declaration by less than all named inventors of an application is accepted where it is shown that less than all named inventors of an application invented the subject matter of the claim or claims under rejection. 1.131 can’t swear behind 102(b) art 1.131 can’t swear behind same patentable invention 1.132 “unexpected result” irrelevant for 102 art Swearing Back of a Reference: (715) What it is: “Swearing Back” means that under some circumstances the applicant can file an affidavit (under 37 CFR 1.131 or sometimes 37 CFR 1.132) that the applicant actually invented the matter that is discussed in the prior art before the prior art was published (swearing back in time before the prior art was published). Formally, the affidavit just has to be a sworn, written statement (may be an oath or declaration) 715.05: When your Patent App claims the same invention as another app or patent: * Remember: you cannot file an affidavit in this situation!The Board determined that Applicants had waived its defense of prior reduction to practice, and was limited to prior conception with diligence, because the reduction to practice issue was not raised in Applicants’ briefs. With respect to the Board’s ruling that Applicants had waived its “reduction to practice” argument, the Federal Circuit disagreed.The Court then concluded that Applicants “had not set forth specific facts to establish dates and acts of either conception or reduction to practice.” The Board ultimately affirmed the Examiner’s rejection of the claims as obvious based on the ‘560 reference. The issue on appeal was whether Applicants antedated the ‘560 reference in accordance with Rule 131. According to the Court, Applicants’ references to activities earlier than the effective date of the ‘560 reference in its Appeal and Reply Briefs “negate[d] the Board’s ruling that [Applicants] waived the issue of actual reduction to practice.” However, the Court concluded that substantial evidence supported a finding that Applicants failed to establish conception and continuing diligence, or actual reduction to practice, before the effective date of the ‘560 reference.