In re Katz

MILLER, Judge,

dissenting.

The board correctly held that it is reasonable to infer coinventorship from coauthor-ship. This inference is sufficient to justify a determination by the PTO that the reference printed publication (“Chiorazzi et al.”) in question is prior art under 35 U.S.C. § 102 as applied against an application for patent filed by one of the coauthors.1 In re Facius, 56 CCPA 1348, 408 F.2d 1396, 161 USPQ 294 (1969); In re Mathews, 56 CCPA 1033, 408 F.2d 1393, 161 USPQ 276 (1969); In re Land, 54 CCPA 806, 368 F.2d 866, 151 USPQ 621 (1966). Although all of the latter opinions by this court have involved prior patents issued to different inventive entities, the board has established a line of cases involving only printed publications. In re Magner, 133 USPQ 404 (1961); In re Seaborg, 131 USPQ 202 (1960); In re Hirschler, 110 USPQ 384 (1952); In re Layne, 63 USPQ 17 (1943). Such cases are analogous to the instant appeal, and, contrary to appellant’s arguments, are consistent.

In Layne, the board agreed with the examiner that an affidavit by the applicant, stating that an article published by another was made with the applicant’s consent, was not sufficient to overcome the examiner’s rejection. The board stated:

[I]t is stated in the brief that counsel can obtain an affidavit of the writer of the article in the publication that he obtained his information from the deponent. It is our view that this affidavit of the writer of the article, H. Lee Flood, should be furnished to afford complete and satisfactory proof of the identity of the article disclosed in the publication.
... [Ujntil the affidavit referred to is furnished, the rejection on the publication in the Petroleum Engineer appears proper. For this reason, the rejection is affirmed. It is recommended, however that if a proper affidavit of H. Lee Flood is promptly submitted, the claims be allowed.

63 USPQ at 19. Layne differs from the present case in that the inventor in Layne was not named as a coauthor; here, Katz was one of the named coauthors.

When presented with an examiner’s rejection utilizing a publication coauthored by the applicant and his laboratory assistant, the board in Hirschler refused to sustain the rejection in view of the submission of an affidavit disclaiming inventorship which was executed by the lab assistant. The board said:

[A]n affidavit which points out that affiant took no part in writing the article and was not the inventor of the subject matter described in the article, but was merely listed as coauthor of the article in order to receive credit for having collaborated on the research program under the directions of present appellant, is properly acceptable and ... the article may be considered the sole work of present appel*457lant. Since the article is not a statutory bar, it is not effective as a reference.

110 USPQ at 387. Here, of course, there are no disclaiming affidavits filed by the co-authors and alleged noninventors.

Appellant quotes the following statement of the board in Seaborg explaining that a Rule 131 affidavit was unnecessary:

The issue is not one of priority but attribution of inventorship, the examiner evidently having in mind the possibility that Wahl might be a joint inventor. But we would emphasize that the bare fact that Wahl is the literary co-author is not evidence of joint inventorship.

131 USPQ at 203. This statement is taken out of context, the board actually concluding:

On the question of originality any evidence convincing to the Office may be accepted. The evidence here is in the form of an affidavit by joint author Wahl stating that he is not the inventor of the subject matter claimed herein. In absence of any adversity of interest there seems to be little basis for challenging this affidavit. In fact, the examiner states on page 4 of his answer that he “has no doubt that Seaborg is the sole inventor of the subject matter claimed.” Under these circumstances we see no valid basis for maintaining the rejection on the Seaborg and Wahl article.

131 USPQ at 203. As is apparent, a disclaiming affidavit was filed by the coauthor and noninventor, which clearly distinguishes Seaborg from the present case. Also, the board justified its position, at least in part, on the basis that the affiant had no “adversity of interest.”

In Magner, three of four applicants had published an article disclosing their invention less than a year prior to the application’s filing date. The three coauthors and coinventors filed an affidavit declaring that the fourth applicant was also a coinventor, viz., that he “and themselves mutually participated in the conception, research and reduction to practice of the invention claimed ...” and that the article “was prepared from the research records of themselves and the fourth co-inventor.” 133 USPQ at 405. The examiner refused to accept this affidavit because an explanatory affidavit by the fourth co-inventor had not been presented. The board refused to sustain the examiner’s rejection, stating:

The article is by three of the four joint inventors; we see no necessity for an affidavit under Rule 131 as no question of priority is involved. The question is as to attribution of inventorship — an explanation of the relation of the publication by three of the joint inventors to the application of all four of them. We think that the affidavit satisfies this requirement. On the question of originality any competent evidence convincing to the Office may be accepted. There is no reason to doubt the statement of the three joint inventors as to the participation of the fourth inventor as this statement is of no benefit to them. [Emphasis supplied.]

Id. This is unlike the present case, where the appellant’s affidavit is favorable to his own interest and adverse to the interests of coauthors Chiorazzi and Eshhar.

Appellant argues that the board’s reasoning in In re MeGuckian, 202 USPQ 398 (1975), is somehow analogous and supports his position. MeGuckian, however, involved the use of a typical 37 CFR 1.131 affidavit filed to overcome the examiner’s application of a United States Patent as a reference under 35 U.S.C. § 102(e). The examiner determined that the Rule 131 showing, which included three declarations, two by applicant and one by his attorney, and fifteen exhibits, was not sufficient to meet the requirements of the rule. The board held that the Rule 131 showing was sufficient and indicated that the examiner was required to ,accept as true the applicant’s sworn statements that “ ‘he is the inventor’; that ‘he conceived and reduced to practice the invention’; and that the work evidenced by Exhibits 1 through 15 ‘was made through his efforts and others at his request on his behalf.’ ” In this context, as quoted by Katz, the board said:

It is neither the Examiner’s function nor our function under such circumstances to *458divine the role if any played by someone who is a complete stranger to the proceeding. It is only in some inter partes proceeding, totally lacking here, where all interested parties are represented and the fundamental safeguards of direct examination and cross-examination are possible, that the question of inventorship and dates of invention can be explored in the manner attempted by the Examiner here.

202 USPQ at 399. However, McGuckian offers no support to appellant. That case was concerned only with the adequacy of the applicant’s Rule 131 showing; whereas, appellant here has not attempted to comply with the requirements of Rule 131.

Essentially, appellant argues that this court either should hold that coauthorship is not evidence of, or a basis for inferring, coinventorship or should accept without question an affidavit by an applicant which simply states that he is the sole inventor. To the contrary, I would hold that coauthorship is evidence of coinventorship and creates an inference thereof which is sufficient to establish a prima facie case under either 35 U.S.C. § 102(a), (f), or (g) that the Chiorazzi et al. article is prior art;2 further, that appellant’s declaration does not rebut the prima facie case.3

As to the showing that would be sufficient to overcome the government’s prima facie case, it is to be noted that inventor-ship is a matter of law which depends upon factual matters underlying the development of the invention, including the contribution by all parties involved with the claimed invention. See Linkow v. Linkow, 517 F.2d 1370, 186 USPQ 223 (CCPA 1975); Hedgewick v. Akers, 497 F.2d 905, 182 USPQ 167 (CCPA 1974). As related earlier, the board’s decision to accept or reject affidavits affecting a nonaffiant’s rights in an invention has been predicated upon whether the affiant’s statements are adverse to the nonaffiant’s interest. Because the affiant, Katz, seeks to adversely affect the interests of the coauthors Chiorazzi and Eshhar, the PTO has refused to accept his affidavit as determinative, leaving him a choice of submitting affidavits by Chiorazzi and Eshhar disclaiming any interest in the invention or making a showing of facts in existence pri- or to the date of publication of the Chiorazzi et al. article sufficient to prove that inventorship of the claimed invention lies solely with Katz.4

The majority accepts the Katz declaration, which simply concludes that Katz is the sole inventor and that his coauthors were students in his employ. Katz has not provided either a recitation of facts to support these conclusions, viz., type of supervision in the lab, circumstances resulting in his conception, instructions to his coauthors, participation and performance by his coauthors, etc. or a recitation of facts from which the PTO could conclude that his coauthors played no role in the conception of the invention. Joint publication of this article in the names of Katz, Chiorazzi, and Eshhar, without explanation, places a cloud upon the sole application of Katz and requires that Katz affirmatively clear the air. This he has not done.

In view of the PTO’s limited resources for processing in excess of 100,000 patent applications a year, it is disappointing that a majority of this court cannot see its way to extend a helping hand to the effort of a vital administrative agency to protect the integrity of the patent system, with minimal inconvenience to an applicant.

. As argued by the Solicitor, this printed publication is also evidence that “the invention was known or used by others in this country ... or described in a printed publication in this ... country, before the invention thereof by applicant” under 35 U.S.C. § 102(a) and, as held by the examiner, is evidence that “before the applicant’s invention thereof the invention was made in this country by another” under 35 U.S.C. § 102(g). The “others” in 102(a), “not himself’ in 102(f), and “another” in 102(g) are terms that serve to distinguish between different inventive entities. Contrary to the majority opinion’s view of section 102(g), the Katz et al. article indicates that the invention was actually reduced to practice; appellant did not contest the examiner’s rejection on this basis. In this case, Katz, the applicant, is one inventive entity and his effective date of invention, as the record now stands, is his application filing date. Collectively, Katz, Chiorazzi, and Eshhar comprise a second inventive entity. See Chisum on Patents § 3.08[2](a).

. See note 1, supra.

. If Chiorazzi and Eshhar were merely involved in assembling data, conducting experiments, testing the invention, or reporting the inventor’s activities, it is not unreasonable to require that this limited role be affirmed by them or Katz. After all, the resources of the PTO are limited and such information is readily available to appellant.

. See U. S. Patent & Trademark Office, Manual of Patent Examining Procedure § 715.01(c) (4th Ed. Rev. 1980).