BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE ANTHONY L. DUNNE AND JOSEPH C. HUBER, JR. Appeal No. 91-0903

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 91-0903

June 7, 1991



 Application for Patent filed September 3, 1987, Serial No. 092,859. Infrared Signature Enhancement Decoy.



L.A. Germain et al. for appellants



Primary Examiner--Peter A. Nelson



Before Calvert



Vice Chairman



Thomas and Krass














 This is a decision on the appeal from the examiner's rejection of claims 1 to 10, which constitute all of the claims in the application.



 Claim 1 is reproduced below:

   1. A decoy flare ejectable from an airborne dispenser operates in a substantially aerodynamic configuration and provides an enhanced infrared signature to attract IR and heat-seeking threats for decoy effect comprising:

   a body of ignitable, infrared-producing, composite grain material having a length greater than its width and designated forward and aft ends, the forward end characterized by an axial bore penetrating a specific length into the composite grain material;

   a weighted mass affixed to the forward end of the body in a manner such that it may be stowed into the bore at the forward end and extended axially away from the forward end to move the c.g. of the body forwardly for aerodynamic flight and to shield the body from direct air flow about the body; and

   a rapidly ignitable coating covering the surface area of the composite grain material such that, upon ejection of the decoy flare from the dispenser, the coating is ignited which results in ignition of the composite grain material for producing IR effect.



 No references are relied on by the examiner.



 Claims 1 to 10 stand rejected under 35 U.S.C. 102(c), the examiner alleging the appellants have abandoned their invention. [FN1]



 Rather than reiterate the arguments of the appellants and the examiner, reference is made to the brief and the answer for the respective details thereof.





 We will not sustain the rejection of claims 1 to 10 under 35 U.S.C. 102(c).



 In the advisory action dated August 10, 1989, the examiner asserted that his review of the declaration and supporting materials submitted under 37 CFR 1.131 established that appellants conceived and reduced to practice the present invention by June 3, 1982. The examiner further asserted therein that based upon that date and the filing date of the instant application of September 3, 1987, the intervening delay constituted an abandonment, suppression or concealment of the invention. At page 5 of his answer, the examiner's review of the supporting documents indicated to him a "constructive reduction to practice in 1982." The examiner also concluded there that the invention was "effectively reduced to practice in 1982."



 The examiner appears to misapprehend the correct requirements for a true abandonment under 35 U.S.C. 102(c). The examiner's line of reasoning relying upon an abandonment, suppression or concealment is based upon 35 U.S.C. 102(g) and not 35 U.S.C. 102(c). It is generally recognized in patent law that a constructive reduction to practice occurs only upon the filing of an application. Hence, the present application was constructively reduced to practice on September 3, 1987, upon the filing of the present application. See, for example, 1 Rivise and Caesar, Interference Law and Practice, §§ 130 and 154 (Michie Co., 1940). The examiner's terminology "effectively reduced to practice" is a misnomer in that their is no "effective" reduction to practice. Rather an actual reduction to practice appears to have been intended by the examiner and this requires a physical embodiment of the invention in tangible form. See, for example, Rivise and Caesar, op. cit., § 132.



  *2 Appellants' two affidavits submitted under 37 U.S.C. 1.131 as well as the supplemental supporting materials thereto do not give rise to a conclusion that appellants had actually reduced to practice the presently claimed invention in 1982 (or even at all before the filing date of the present application) contrary to that which is alleged by the examiner. Furthermore, without an actual reduction to practice there is no invention in existence that can be abandoned, suppressed or concealed under 35 U.S.C. 102(g). Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976). Therefore, the examiner's concern for the hiatus between the filing of the invention disclosure document on June 3, 1982, (or just before the U.S. filing date of the Badura patent of June 12, 1985) to the filing of the present application on September 3, 1987, is misplaced because there is no evidence of an actual reduction to practice of the invention. Under 35 U.S.C. 102(g) a hiatus between an actual reduction to practice and the filing of an application may give rise to an inference of an intent to suppress. Peeler v. Miller, supra. We are not here concerned with a rejection under 35 U.S.C. 102(g), and even if we were, there is no evidence of record of an actual reduction to practice.



 Actual abandonment under 35 U.S.C. 102(c) requires that the inventor intend to abandon the invention, and intent can be implied from the inventor's conduct with respect to the invention. In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971). Such intent to abandon an invention will not be imputed, and every reasonable doubt should be resolved in favor of the inventor. Chicopee Manufacturing Corp. v. Columbus Fiber Mills Co., Inc., 165 F.Supp. 307, 118 USPQ 53 (M.D.GA 1958); and Imperial Brass Mfg. Co. v. Bonney Forge and Tool Works, Inc., 38 F.Supp. 829, 49 USPQ 144 (E.D.PA 1941). While it may be said that the evidence supplied in appellants' exhibits C1 to C5 does not show any changes, modifications, improvements or attempts to actually reduce to practice the invention over the period of time from 1983 to 1987, these exhibits clearly do not manifest an intent to abandon the invention. On the contrary, this evidence appears to us to indicate an intent to keep alive the conception of the invention set forth in the original invention disclosure document so that it and related inventions may be further developed. Delay in filing alone is not a sufficient basis from which to infer the requisite intent to abandon under 35 U.S.C. 102(c). Moore v. United States, 194 USPQ 423 (Ct.Cl.Tr.Div.1977).



  *3 In view of the foregoing, the decision of the examiner rejecting claims 1 to 10 under 35 U.S.C. 102(c) is reversed.









Ian A. Calvert



Vice Chairman



James D. Thomas






Errol A. Krass






FN1. In the final rejection the examiner rejected certain claims under 35 U.S.C. 102 as being clearly anticipated by Badura (U.S. Patent No. 4,621,579) and all claims under 35 U.S.C. 103 in view of this reference and the teachings in Varmo (U.S. Patent No. 4,700,628). Upon appellants' submission of an affidavit under 37 CFR 1.131, the examiner withdrew these art rejections and instituted the rejection under 35 U.S.C. 102(c).


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