Ex Parte MacLeod

Patent Trial and Appeal Board

Dec 17, 2012

12180694 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEVEN K. MacLEOD
__________

Appeal 2012-002447
Application 12/180,694
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an ophthalmic composition. The Patent Examiner rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2012-002447
Application 12/180,694

2
STATEMENT OF THE CASE
Claims 1 and 3-8 are on appeal, as the Examiner rejected them
under 35 U.S.C. § 102(e) as unpatentable over Burke et al. (US
2009/0036554 A1, published Feb. 5, 2009). (Ans. 6-7.)
Appellant’s Brief also requests review of a rejection under 35 U.S.C.
§ 103(a) over two other references, but the Examiner has withdrawn the
§ 103 rejection, rendering that issue moot. (See Ans. 4-5.)

DISCUSSION
Appellant’s Application claims the benefit of provisional Application
No. 60/953,535, filed Aug. 2, 2007. Burke’s published Application claims
the benefit of provisional Application No. 60/953,219, filed Aug. 1, 2007,
one day earlier than Appellant’s Application filing date. Burke therefore is
prima facie available as prior art under § 102(e).
Appellant filed an “Affidavit under 37 C.F.R. § 1.131,” which is said
to provide documentary evidence of invention prior to Burke’s filing date.
(App. Br. 4.) According to Appellant’s Brief, the Examiner refused to enter
the Affidavit, because its submission was “not timely, and Applicant did not
present a sufficient reason why the 131 Affidavit was not presented earlier.”
(Id.)
The Examiner reconsidered entering the Affidavit, and tells us the
Affidavit has now been entered. (Ans. 7.) However, the Examiner
maintains that the Affidavit is “insufficient,” as it (i) “was not signed by the
inventor, and no petition under 37 CFR § 1.47 has been submitted by
Applicants indicating the unavailability of the inventor;” and (ii) “provides
Appeal 2012-002447
Application 12/180,694

3
insufficient information to prove date of invention prior to 1 August 2007.”
(Ans. 7-8.)
Rule 1.131 provides:
When any claim of an application . . . is rejected, the inventor
of the subject matter of the rejected claim . . . may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the reference
. . . .

37 C.F.R. § 1.131(a). The rule requires the inventor to make the affidavit.
See MANUAL OF PATENT EXAMINING PROCEDURE § 715.04(I) (Who May
Make Affidavit Or Declaration).
The Examiner’s first point, lack of the inventor’s signature, is critical.
The Affidavit itself is signed by Joseph Barrera, Attorney for Applicant.
Inventor MacLeod’s signature appears on an attachment, but not on the
Affidavit. Because the Affidavit is insufficient without the Inventor’s
signature, it cannot be accepted as establishing facts in the attachment, and
does not establish prior invention. Under this circumstance, we decline to
reach the merits of the Examiner’s second point concerning the insufficiency
of the evidence.

SUMMARY
We affirm the rejection of claims 1 and 3-8 under 35 U.S.C. § 102(e)
as unpatentable over Burke.

Appeal 2012-002447
Application 12/180,694

4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

alw