IN RE DeBAUN

NIES, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the rejection of claims 9 and 10 in application Serial No. 952,695 for reissue of Patent No. 3,964,519 filed November 18, 1974, for "Fluid Velocity Equalizing Apparatus." The rejection was for obviousness under 35 U.S.C. § 1031 in view of a disclosure in a patent issued to appellant and Noll less than one year prior to November 18, 1974. The board held that the reference may be used against appellant. We reverse.

Background

The invention "relates generally to apparatus for conditioning the flow pattern [of] fluids flowing in conduits ... particularly ... for equalizing the velocity profile of fluid flowing in a conduit." The invention is stated to be "useful in the type of apparatus disclosed in U. S. Patent 3,842,678 issued to Kenneth W. DeBaun and Robert W. Noll on October 22, 1974." The DeBaun and Noll patent ('678 patent) filed June 1, 1973, is the sole reference forming the basis of the examiner's rejection.

The claims of the present application are directed specifically to the "equalizer honeycomb section 4."2 Claim 9 is representative.

The examiner rejected the claims under 35 U.S.C. § 103 in view of the '678 patent. The '678 patent and the subject application disclose an identical passageway with an equalizer honeycomb section but the '678 patent neither describes nor claims the equalizer honeycomb section's ratio of surface area to cross-sectional area. Further, the reference claims a complete air sampling system including the passageway containing the basic equalizer honeycomb section as shown above while appellant claims only the passageway containing the improved equalizer honeycomb section.

Appellant concedes that the equalizer honeycomb section of the '678 patent is "essentially constructed in accordance with applicant's invention." He further concedes, for purposes of appeal, that the relationship of surface area to cross-sectional area is "part of the teaching of [the '678 patent] or would be obvious in view thereof."

To overcome the rejection, the examiner required that appellant file an affidavit under Rule 1313 and an affidavit by Noll disclaiming inventorship of the basic equalizer honeycomb section.

No affidavit by Noll was submitted to comply with the examiner's requirement. Instead, appellant's attorney filed a declaration stating, inter alia, that "he is informed and believes" that Noll's whereabouts are not known to Air Monitor Corporation.4 Noll was an employee of Air Monitor Corp. at the time the application for the '678 patent was filed but has since left its employ.

Appellant also filed the following declaration:

The examiner maintained the rejection, concluding that appellant's declaration was insufficient under Rule 131 to overcome the reference.

The board sustained the § 103 rejection. While agreeing with appellant that Noll's disclaimer should not be required, the board concluded:

On rehearing, the board rephrased its conclusion:

OPINION

I

We agree with the examiner and the board that appellant could overcome, or "antedate," the '678 patent with a proper Rule 131 declaration. In re Facius, 56 CCPA 1348, 1355, 408 F.2d 1396, 1404, 161 USPQ 294, 300 (1969). We also agree that the declarations herein are insufficient under Rule 131 as they fail to allege facts showing the necessary diligence and/or reduction to practice of the invention now claimed.6 See In re Harry, 51 CCPA 1541, 333 F.2d 920, 142 USPQ 164 (1964). However, the examiner erred in concluding that a Rule 131 affidavit is the only way of overcoming the rejection made in this case. See, e.g., In re Land, 54 CCPA 806, 825, 368 F.2d 866, 879-80, 151 USPQ 621, 633 n. 11 (1966).

In In re Katz, 687 F.2d 450 (Cust. & Pat.App. 1982) issued concurrently, we have reaffirmed that an applicant's own work, even though publicly disclosed prior to his application, may not be used against him as a reference, absent the existence of a time bar to his application.

Thus, the '678 patent to appellant and Noll, having issued less than one year before the filing date of appellant's original '519 patent application, is only available as a reference if the pertinent disclosure is not the sole work of appellant. As in Katz, supra, the specific issue raised by this appeal is an evidentiary one.

II

While the board recognized that the declarations filed herein under Rule 1327 must be considered, see Facius, 56 CCPA supra at 1352, 408 F.2d at 1402, 161 USPQ at 297 n.4, the board did not, in our view, focus on the significant question.

The board tested the declarations to determine whether they supported appellant's assertion of inventorship of the improved equalizer honeycomb section here claimed. That was error.

The only question raised by the rejection is whether appellant invented the relevant disclosure in the '678 patent.

III

The '678 patent is silent with respect to who invented the basic equalizer honeycomb section itself, and we do not presume that it is the invention of appellant and Noll jointly or of either of them.

As in Katz, supra, the question of whether appellant is the sole inventor was properly raised by the PTO, and it was incumbent on appellant to provide satisfactory evidence, in light of the total circumstances of the case, that the reference reflected his own work. In re Facius, supra; In re Land, supra.

In Facius, the court concluded that the affidavits filed there did not sufficiently support Facius's contentions that he invented subject matter disclosed in the reference patent issued to another sole inventor, noting that the affidavits did not contain any statement that Facius was the inventor of such subject matter. In contrast, appellant's declaration here states that he originally "conceived" the basic equalizer honeycomb section disclosed in the '678 patent and in drawing No. 73-315.

Although the law is well settled that a completed invention requires both conception and reduction to practice, there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf. Litchfield v. Eigen, 535 F.2d 72, 76, 190 USPQ 113, 116 (CCPA 1976). The filing by appellant and Noll of the application for the '678 patent was a constructive reduction to practice of the air sampling system including the passageway which contained the basic equalizer honeycomb section, which inures to appellant's benefit as one of the named inventors in the '678 patent. The question, then, is whether what was constructively reduced to practice was appellant's own conception. On the basis of the record here, which includes appellant's unequivocal declaration that he conceived anything in the '678 patent disclosure which suggests the invention claimed in his present application, that question has been satisfactorily answered.

We conclude that the board erred in upholding the rejection based on the '678 patent in view of appellant's showing that the basic equalizer honeycomb section is appellant's own invention.

REVERSED.

MILLER, Judge, concurring.

I agree with the majority's holding that Noll's disclaimer is unnecessary; also, with its statement that we do not presume that the equalizer honeycomb section is the invention of appellant and Noll jointly or of either of them in light of the quoted language from In re Facius. Appellant's declaration sets forth his conception on or before March 15, 1973, well before the filing date of the DeBaun and Noll '678 patent, and other facts supported by exhibits which justify a conclusion that DeBaun was the sole inventor of the subject matter claimed in the present application. Thus, this case is readily distinguishable from the facts in In re Katz, 687 F.2d 450 (Cust. & Pat.App. 1982) wherein I have filed my dissent. See In re Land, 54 CCPA 806, 823, 368 F.2d 866, 878, 151 USPQ 621, 632 (1966).