Wednesday, May 26, 2010

Swear behind not sufficient to show reduction when future tense used (Ex parte Knaus)

Takeaway: The BPAI concluded that a swear behind declaration did not show reduction to practice because the supporting inventor documentation described the invention using future tense.

Ex parte Knaus
(Appeal 2009-0552, Appl. No. 09/822,261, Tech. Center 3600)
Decided May 1, 2009

The Applicant submitted a swear behind declaration which alleged to show conception and reduction to practice before the effective date of the reference. However, the supporting exhibit consistently described the invention in the future tense: "My approach would use the power of the Internet to develop ... " ; "Individuals therefore would be the main customers for this service." "I could envision linking such data ..." Furthermore, the supporting document specifically described the invention as being in a "conceptual phase."

The Board found that by discussing the invention in the future tense and as a concept, the document "at best shows conception," not reduction to practice. Since the declaration failed to show due diligence, the Applicant failed to remove the reference as prior art.

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