Q) Diligence (4.02.4p)

by patentbar on August 22, 2008 · 2 comments

in Exam Questions

4. Assume that conception of applicant’s complex invention occurred prior to the
date of the reference, but reduction to practice occurred after the date of the reference.
Which of the following is sufficient to overcome the reference in accordance with proper
USPTO practice and procedure?
(A) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to allege that
applicant or patent owner has been diligent.
(B) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference, and diligence from just prior to the effective date of the
reference to actual reduction to practice. The presence of a lapse of time
between the reduction to practice of an invention and the filing of an
application thereon is not relevant.
(C) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly
establish conception of the invention prior to the effective date of the
reference. Diligence need not be considered.
(D) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to show
conception and reduction to practice in any country.
(E) In a 37 CFR 1.131 affidavit or declaration, it is always sufficient to prove
actual reduction to practice for all mechanical inventions by showing plans
for the construction of the claimed apparatus.

Diligence raises its head. It must be proven from a moment in time at least prior
to the reference date and should be uninterrupted through reduction to practice or
filing. B corresponds to these rules.

{ 2 comments… read them below or add one }

1 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:36 pm

Got this. 06.30.2012

Reply

2 UpnorthguyNo Gravatar August 18, 2012 at 12:56 pm

The full answer:
(B) is the most correct answer. See Ex parte Merz, 75 USPQ 296 (Bd. App.
1947) (holding that the “lapse of time between the completion or reduction to practice of an invention and the filing of an application thereon” is not relevant to an affidavit or declaration under 37 C.F.R. § 1.131(b)); MPEP § 715.07(a). (A) is incorrect. Ex parte Hunter, 1889 C.D. 218, 49 O.G. 733 (Comm’r Pat. 1889); MPEP § 715.07(a). Applicant must show evidence of facts establishing diligence. (C) is incorrect. Ex parte Kantor, 177 USPQ 455 (Bd. App. 1958)
(after conception has been clearly established, diligence must be considered prior to the effective date is clearly established, since diligence then comes into question); MPEP § 715.07(a). (D) is incorrect. MPEP § 715.07(c). 37 C.F.R. § 1.131(a) provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant can establish a date of completion in a NAFTA member country on or after December 8, 1993, the effective date of section 331 of Public Law 103 – 182, the North American Free Trade Agreement Act, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996, the effective date of section 531 of Public Law 103 – 465, the Uruguay Round Agreements Act. Not all countries are members of NAFTA or WTO, and prior invention in a foreign country cannot be shown without regard for when the reduction to practice occurred. (E) is incorrect. MPEP § 715.07. Actual reduction to practice generally, but not always, requires a showing that the apparatus actually
existed and worked, “There are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice.” In re Asahi/America Inc., 68 F.3d 442, 37 USPQ2d 1204 (Fed. Cir. 1995) (citing Newkirk v. Lulegian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253 (CCPA 1931).
The claimed restraint coupling held to be so simple a device that mere construction of it was sufficient to constitute reduction to practice. Photographs, coupled with articles and a technical report describing the coupling in detail were sufficient to show reduction to practice.).

Reply

Leave a Comment

Previous post:

Next post: