2138 35 U.S.C. 102(g) [R-3]

2138.01 Interference Practice [R-08.2017]

I. PRE-AIA 35 U.S.C. 102(g) IS THE BASIS OF INTERFERENCE PRACTICE

II. PRIORITY TIME CHARTS

III. 37 CFR 1.131 DOES NOT APPLY IN INTERFERENCE PROCEEDINGS

IV. LOST COUNTS IN AN INTERFERENCE ARE NOT, PER SE, STATUTORY PRIOR ART

2138.02 "The Invention Was Made in This Country" [R-11.2013]

2138.03 "By Another Who Has Not Abandoned, Suppressed, or Concealed It" [R-10.2019]

I. DURING AN INTERFERENCE PROCEEDING, AN INFERENCE OF SUPPRESSION OR CONCEALMENT MAY ARISE FROM DELAY IN FILING PATENT APPLICATION

II. SUPPRESSION OR CONCEALMENT NEED NOT BE ATTRIBUTED TO INVENTOR

III. INFERENCE OF SUPPRESSION OR CONCEALMENT IS REBUTTABLE

IV. ABANDONMENT

2138.04 "Conception" [R-5] - 2100 Patentability

BOSIES

See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994) (the preponderance of the evidence standard requires the finder of fact to believe that the existence of a fact is more probable than its nonexistence).

COLEMAN

The Federal Circuit “applies a ‘rule of reason’ standard when reviewing the sufficiency of evidence about reduction to practice.” Id., at 1238 (citing Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985)). The rule of reason “requires the Patent and Trademark Office to examine, analyze, and evaluate reasonably all pertinent evidence when weighing the credibility of an inventor's story.”Id., at 1239.

BURROUGHS HYBRIDTECH SEWALL COLEMAN

For starters, we focus on the issue of conception. As comprehensively set forth by the Federal Circuit in Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994):

Conception is the touchstone of inventorship, the completion of the mental part of invention. Sewall v. Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1359 (Fed. Cir. 1994). It is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986) (citation omitted). Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Sewall, 21 F.3d at 415, 30 USPQ2d at 1359; see also Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985) (conception must include every feature of claimed invention). Because it is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention. Coleman v. Dines, 754 F.2d at 359, 224 USPQ at 862.

INVITROGEN

The Examiner is correct in noting that Appellants do not provide any evidence to support the statement that a continuous extrusion process would not easily be used with the teachings of Harper. Ans. 7. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for competent evidence); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

2138.05 "Reduction to Practice"

DSL

“[P]roof of actual reduction to practice requires a showing that ‘the embodiment relied upon as evidence of priority actually worked for its intended purpose.’” DSL Dynamic Sciences Ltd. v. Union Switch & Signal, Inc., 928 F.2d 1122, 1125 (Fed. Cir. 1991), quoting Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed. Cir. 1987). “On the other hand, tests performed outside the intended environment can be sufficient to show reduction to practice if the testing conditions are sufficiently similar to those of the intended environment.” Id. at 1125.

2138.06 "Reasonable Diligence"

I. CRITICAL PERIOD FOR ESTABLISHING DILIGENCE BETWEEN ONE WHO WAS FIRST TO CONCEIVE BUT LATER TO REDUCE TO PRACTICE

II. THE ENTIRE PERIOD DURING WHICH DILIGENCE IS REQUIRED MUST BE ACCOUNTED FOR BY EITHER AFFIRMATIVE ACTS OR ACCEPTABLE EXCUSES

PERFECT SURGICAL

Appellant further cites MPEP § 2138.06 and Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016), in support of the position that the absence of evidence that an inventor and his attorney revised or discussed the application on a daily basis is alone insufficient to determine that the invention was abandoned or unreasonably delayed. (Reply Br. 3.)

Reasonable diligence is established if attorney worked reasonably hard on the application during the continuous critical period. If the attorney has a reasonable backlog of unrelated cases which he takes up in chronological order and carries out expeditiously, that is sufficient. See MPEP § 2138.06; Perfect Surgical Techniques, Inc. v. Olympus Am., Inc. (Perfect Surgical), 841 F.3d 1004, 1009 (Fed. Cir. 2016).

MULDER, GOULD

To satisfy the due diligence showing requirement of 37 C.F.R. § 1.131, Appellant must present proof of diligence, no matter how short the period to be covered. In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983) (noting that focusing on the shortness of the period to be covered—two days—is misleading where there is no evidence of record showing diligence). Moreover, to establish diligence, the inventor must provide specific details as to what was done and when it was done during the critical period. See Gould v. Schawlow, 363 F.2d 908, 918 (CCPA 1966).

BEY

To establish diligence for constructive reduction to practice, the attorney’s diligence must be shown. “[R]easonable diligence can be shown if it is established that the attorney worked reasonably hard on the particular application in question during the continuous critical period.” Cf. Bey v. Kollonitsch, 806 F.2d 1024, 1027 (Fed. Cir. 1986) (interference). “[The inventor’s] records did not show the exact days when activity specific to this application occurred. Thus, we cannot say that the board clearly erred in finding that ‘the documented activities with regard to [the present application] are insufficient by themselves to prove diligence.’” Id. at 1028 (second brackets in original). “[I]t may not be possible for a patent attorney to begin working on an application at the moment the inventor makes the disclosure, because the attorney may already have a backlog of other cases demanding his attention” so that “the courts have recognized that reasonable diligence is all that is required of the attorney.” Id. “Generally, the patent attorney must show that unrelated cases are taken up in chronological order, thus, the attorney has the burden of keeping good records of the dates when cases are docketed as well as the dates when specific work is done on the applications.” Id.

Reasonable diligence can be shown by establishing that “the attorney worked reasonably hard on the particular application in question during the continuous critical period.” Bey v. Kollonitsch, 806 F.2d 1024, 1027 (Fed. Cir. 1986).