Laurel, Abbot, and Hardy

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14. On August 7, 1997, practitioner Costello filed a patent application identifying Laurel, Abbot, and Hardy

as inventors. Each named inventor assigned his patent rights to Burns just prior to the application being filed.

Laurel and Abbot, alone, jointly invented the subject matter of independent claim 1 in the application.

Hardy contributed to inventing the subject matter of claim 2. Claim 2 properly depends upon claim 1.

The examiner rejected claim 1 and claim 2 under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen,

dated July 9, 1997. Laurel, Abbot, and Hardy are readily available to provide evidence in support of and sign

an antedating affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1

and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37 C.F.R. § 1.131

to overcome the rejection of claims 1 and 2 ?

(A) Laurel and Abbot.

(B) Laurel, Abbot, and Hardy.

(C) Laurel, Hardy and Burns.

(D) Burns only.

(E) None of the above.

14. ANSWER: (B). MPEP 715.04. (A) is incorrect since it cannot be shown that less than all the inventors

invented the subject matter of claim 2. (C) and (D) are incorrect since the assignee can make an affidavit

under 37 C.F.R. § 1.131, only when it is not possible to produce the affidavit of the inventor. The facts indicate

that all inventors were readily available produce the affidavit. (E) is incorrect since (B) is correct.

715.04 Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations [R-6]

(700 Examination of Applications)

I. WHO MAY MAKE AFFIDAVIT OR DECLARATION

The following parties may make an affidavit or declaration under 37 CFR 1.131:

(A) All the inventors of the subject matter claimed.

(B) An affidavit or declaration by less than all named inventors of an application is accepted where it is shown

that less than all named inventors of an application invented the subject matter of the claim or claims under rejection.

For example, one of two joint inventors is accepted where it is shown that one of the joint inventors is the sole inventor

of the claim or claims under rejection.

(C) If a petition under 37 CFR 1.47 was granted or the application was accepted under 37 CFR 1.42 or 1.43, the affidavit

or declaration may be signed by the 37 CFR 1.47 applicant or the legal representative, where appropriate.

(D) The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor.

Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903).