Please contact customerservices lexology. Addressing the requirements for antedating a prior art reference for a pre-AIA patent applicationthe U.
Court of Appeals for the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences that a table which purports to associate a date with a piece of evidence, but does not explain how the evidence corresponds to conception or reduction to practice, is insufficient to establish a date of invention or actual or constructive reduction to practice. In re Steed et al. After unsuccessfully arguing that the claimed invention was distinct from Evans, the inventors attempted to file a declaration to antedate Evans.
Antedating reference patent
The inventors argued that they conceived of the invention prior to the effective date of Evans and that they were diligent in actually or constructively reducing their invention to practice between their conception date and a time immediately after the effective date of Evans. The evidence provided to the examiner included a Antedating reference patent by the inventors that they had conceived of the invention several years before the effective date of Evans, as well as hundreds of pages of electronic or paper notes.
The inventors also provided a table that identified certain evidence and the date corresponding to that evidence.
The Board affirmed the examiner, concluding that the inventors failed to provide sufficient evidence to antedate Evans. The Board explained that the inventors failed to establish a date of either actual or constructive reduction to practice before the effective date of Evans.
Furthermore, the Board found that the Antedating reference patent waived any factual arguments that were not presented to the examiner and, in their appeal, had to rely only on the arguments presented to the examiner. The Federal Circuit noted that the inventors never stated a date by which the conception or reduction to practice had been completed.
Regarding waiver, the Federal Circuit noted that the inventors had not waived any arguments regarding conception, reduction to practice or diligence, as it was clear from the record that the inventors disagreed with the examiner regarding those issues. Thus, the Court explained the inventors were free to elaborate on Antedating reference patent arguments presented to the examiner before the Board.
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