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The Board determined that Applicants had waived its defense of prior reduction to practice, and was limited to prior conception with diligence, because the reduction to practice issue was not raised in Applicants’ briefs. With respect to the Board’s ruling that Applicants had waived its “reduction to practice” argument, the Federal Circuit disagreed.

The Court then concluded that Applicants “had not set forth specific facts to establish dates and acts of either conception or reduction to practice.” The Board ultimately affirmed the Examiner’s rejection of the claims as obvious based on the ‘560 reference. The issue on appeal was whether Applicants antedated the ‘560 reference in accordance with Rule 131. According to the Court, Applicants’ references to activities earlier than the effective date of the ‘560 reference in its Appeal and Reply Briefs “negate[d] the Board’s ruling that [Applicants] waived the issue of actual reduction to practice.” However, the Court concluded that substantial evidence supported a finding that Applicants failed to establish conception and continuing diligence, or actual reduction to practice, before the effective date of the ‘560 reference.

For example, the Board criticized the inventor for not indentifying “any specific activities undertaken or the dates of those activities.” Instead, the Court ruled the Board should have considered preparation of comments on draft applications that must have been prepared during the unexplained periods, as well as work completed by the drafting attorney (as the inventor’s agent).Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. During the hearing, the Board refused to consider this evidence because it was not evidence of record before the Examiner. In addition, the exhibits revealed that a significant gap of time was unaccounted for to show due diligence. It was not proper to “scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity.” Rather, the purpose “is to assure that, in light of the evidence as a whole, ‘the invention was not abandoned or unreasonably delayed.’” The Board improperly focused on three purportedly unexplained periods; failing to apply a rule of reason for evidence presented during the critical period as a whole. The Court found that the Board erred, and failed to comply with the purpose of the diligence inquiry.




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