14. On August 7, 1997, practitioner Costello filed a patent application identifying Laurel,
Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just
prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter
of independent claim 1 in the application. Hardy contributed to inventing the subject matter of
claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2
under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel,
Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating
affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1
and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37
C.F.R. § 1.131 to overcome the rejection of claims 1 and 2.?
(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.
14. ANSWER: (B). MPEP 715.04. (A) is incorrect since it cannot be shown that less than all
the inventors invented the subject matter of claim 2. (C) and (D) are incorrect since the assignee
can make an affidavit under 37 C.F.R. § 1.131, only when it is not possible to produce the
affidavit of the inventor. The facts indicate that all inventors were readily available produce the
affidavit. (E) is incorrect since (B) is correct.
{ 11 comments… read them below or add one }
What happens if only Laurel and Abbot, but not Hardy were available? Would that still work because claim 2 depends from claim 1?
Since both claims were independently rejected, all the inventors of those claims must make the affidavit. Supposing Hardy is unavailable, I imagine that the assignee would have to sign on his behalf.
HOWEVER…
If claim 1 alone is rejected, then dependent claim 2 will be objected to, and must be written in indpt. form. Since an affidavit under 37 CFR 1.131 is not appropriate to traverse the objection of the dependent claim 2, I would think that only the inventors trying to traverse the rejection of the indpt claim 1, would have to sign, in which case the assignee would not need to sign if Hardy were unavailable because he is not the inventor of claim 1.
Does this sound right?
That sounds right to me.
Had this question today 12/30/10
Had this question 03/06/11.
Repeat on 4/27/2011 MPEP E8R8
had this question on 5/18/11 MPEP E8R8
Repeat – identical on 10/11/11
This helps a lot. Thanks for all of the comments.
Repeat on 20 January 2012.
Got this 2/2