Ex parte Daniels

Informative decision only: persuasive authority, not binding precedent. When an applicant submits a 37 C.F.R. § 1.131 affidavit that only asserts in broad terms reduction to practice, or conception plus diligence, before the reference's effective date, and attaches draft-form or undated exhibits without explaining their content or tying them to the claim limitations, the Board may find the showing insufficient to antedate the reference. Rule 131(b) requires a showing of facts "in character and weight," and a bare recital of due diligence without supporting facts is mere pleading. No prior Board precedential or informative decision is named as modified; the Board follows the CCPA's In re Borokowski and In re Harry and applies them to a Rule 131 affidavit with attached project documents. For the examiner, the decision supports rejecting conclusory affidavits and unexplained exhibits, and the Board affirmed on that basis. For the applicant or appellant, a generic affidavit with attached documents will not swear behind a reference: the applicant must explain what the exhibits show, when the facts occurred, and how they map to the claims, and must supply facts for the whole diligence period (about 15 months here). The Board relied on In re Borokowski, 505 F.2d 713 (CCPA 1974), In re Harry, 333 F.2d 920 (CCPA 1964), In re Spiller, 500 F.2d 1170 (CCPA 1974), and, with a "Cf." signal, In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983). LEGAL TEST OR STANDARD: Under 37 C.F.R. § 1.131(b), "The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application." Original exhibits of drawings or records, or photocopies, must accompany and form part of the affidavit, or their absence must be satisfactorily explained. The Board asked whether the affidavit supplied facts, not mere pleading, to show invention before each reference's effective date. TRIGGERING FACTS: The appellants did not contest the prior art findings and relied only on a Rule 131 affidavit to swear behind Navani and Dabbiere (effective date May 22, 2000). The affidavit stated that the invention was reduced to practice before that date, or conceived before it and diligently reduced to practice thereafter. It attached project documents said to have a date prior to May 22, 2000 and/or to have existed in draft form before that date. The appellants did not explain the documents or tie them to the claim limitations, and they offered only an express recital of diligence over about 15 months to the August 16, 2001 filing and constructive reduction to practice. KEY QUOTE: "In the case before us, the '131 affidavit consists of only a bald assertion in the broadest terms that the invention of claims 1-13 was either reduced to practice prior to the effective date or conceived of prior to the effective date and thereafter diligently reduced to practice." (Paper N/A, p. 11) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows In re Borokowski, 505 F.2d 713 (CCPA 1974), and In re Harry, 333 F.2d 920 (CCPA 1964), as court authority. It cites In re Spiller, 500 F.2d 1170 (CCPA 1974), on the sufficiency of a showing of the basic invention, and cites In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983), with a Cf. signal on diligence. PRACTICE TIP: Do not rely on a conclusory Rule 131 affidavit with a stack of exhibits. Show specific, dated facts, identify which exhibit page supports which fact and claim limitation, and explain any redaction or draft status. Also give facts covering diligence throughout the critical period.