       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

            (Reexamination No. 90/010,007)
IN RE MEYER MANUFACTURING CORPORATION
          __________________________

                      2010-1304
              __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
               ___________________________

              Decided: December 17, 2010
              ___________________________

    JOSEPH A. KROMHOLZ, Ryan, Kromholz & Manion,
S.C., of Milwaukee, Wisconsin, for appellant.

    RAYMOND T. CHEN, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for appel-
lee. With him on the brief were BENJAMIN D. M. WOOD
and ROBERT MCMANUS, Associate Solicitor.
             __________________________

Before LOURIE, CLEVENGER, and MOORE, Circuit Judges.
IN RE MEYER MFG CORP                                      2


MOORE, Circuit Judge.

    Meyer Manufacturing Corporation (Meyer) appeals
the decision of the United States Patent and Trademark
Office (USPTO) Board of Patent Appeals and Interfer-
ences (Board) affirming the examiner’s rejection of all
claims of U.S. Patent No. 5,501,404 (the ’404 patent) as
obvious over U.S. Patent No. 5,435,494 (Knight) in view of
U.S. Patent No. 5,275,335 (the ’335 patent) during ex
parte reexamination. We affirm.

                       BACKGROUND

     Meyer’s ’404 patent, directed to a manure spreader, is
a continuation-in-part (CIP) of U.S. Patent No. 5,368,236
(the ’236 patent or the parent). The principal difference
between the ’404 patent and its parent’s specification is
the height of the disclosed spreader’s expellers relative to
its discharge opening. In the figures, the parent shows an
expeller approximately the same height as its discharge
opening. The parent’s specification mentions size only
twice. For example:

   The improved manure spreader of the present in-
   vention may utilize one or two expellers . . . .
   With a horizontal expeller, the length of the expel-
   ler is approximately equal to the width of the box
   discharge opening. With a vertical expeller, the
   length of the expeller is approximately equal to
   the height of the discharge opening.

’236 patent col.3, ll.35-45; see also col.6, ll.34-35. Only
independent claim 12 recites a limitation on expeller size:
“wherein the expellers have respective axial lengths that
are generally equal to the height of the discharge open-
ing.” Id.
3                                      IN RE MEYER MFG CORP



    During prosecution of the parent application, Meyer
sought to amend four independent claims to include a
half-height limitation, where the axial length of the
expeller is at least half the height of the discharge open-
ing. During a March 24, 1994 interview, the examiner
tentatively agreed, pending supervisor approval. On
April 29, 1994, the examiner informed Meyer that he
would not enter the amendment because it would add new
matter to the specification. Meyer allowed the claims to
issue without the amendments, and on July 8, 1994, filed
a CIP that disclosed and claimed the half-height expel-
lers. The CIP issued as the ’404 patent.

     In 2007, an ex parte reexamination of the ’404 patent
in view of Knight and the ’335 patent was requested after
Meyer asserted the ’404 patent against another manufac-
turer. Knight discloses a manure spreader having a full-
height vertical expeller. In reexamination, the examiner
issued a first office action rejecting all claims in the ’404
patent as obvious in view of Knight. Knight was filed on
April 18, 1994—after Meyer attempted to add the half-
height expeller limitation to the parent application, but
before Meyer filed the ’404 patent. Meyer responded with
two arguments that Knight was not prior art. First,
Meyer asserted that the rejected claims could claim
priority to its parent, and asserted that both Knight and
the parent show similar “tall expellers” that are at least
half the height of the discharge opening. The examiner
considered this argument, but found it unpersuasive.
Second, Meyer asserted that the inventors conceived the
claimed invention including the half-height expeller
before Knight’s filing date, as evidenced by the March 24,
1994 examiner interview summary sheet in the parent’s
file wrapper. Meyer, however, failed to file an affidavit of
prior invention as required under 37 C.F.R. § 1.131.
Accordingly, the examiner issued a final rejection explain-
IN RE MEYER MFG CORP                                      4


ing that the requirements of § 1.131 were not met by the
previous response. Meyer subsequently filed a § 1.131
affidavit (the Amendment C affidavit) from the inventors,
referencing the March 1994 examiner interview as evi-
dencing conception, and attesting that the inventors and
their attorney “were diligent in drafting, revising, and
filing the subject patent” from before Knight’s filing date
until the ’404 patent was filed. The inventors’ affidavit
provided no further facts supporting their assertion of
diligence. The examiner entered the affidavit, but noted
in an Advisory Action that it was insufficient to establish
diligence. On August 19, 2008, Meyer mailed a notice of
appeal and filed additional affidavits from the inventors
and the attorney who prosecuted the ’404 patent and its
parent. In the remarks accompanying the affidavits,
Meyer stated that “Applicants have filed a notice of
appeal.” The USPTO received the affidavits on August
21, 2008, and the Notice of Appeal one day later. Despite
the fact that the affidavits were received before the Notice
of Appeal, the examiner treated the affidavits as if they
had been filed after the Notice of Appeal, and refused to
enter them.

    On appeal, the Board affirmed the examiner’s refusal
to accord the parent’s filing date to the ’404 patent claims
on the basis of written description, reasoning that the
parent specification does not convey with reasonable
clarity that the inventor was in possession of the half-
height impeller. The Board also concluded that the first
affidavit was insufficient to establish diligence because it
was “vague and general in nature, lacking in any details,
and thus, is not of character and weight sufficient to
establish diligence.” The Board explained that because
the examiner refused entry of the second round of affida-
vits, they were not part of the present appeal. The Board
then affirmed the examiner’s determination that the ’404
5                                      IN RE MEYER MFG CORP



patent was obvious over Knight. Meyer appealed, and we
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

                        DISCUSSION

    We review the Board’s ultimate determination of ob-
viousness de novo and its underlying findings of fact for
substantial evidence. In re Gartside, 203 F.3d 1305, 1315-
16 (Fed. Cir. 2000). On appeal, the only disputed claim
element is the half-height expeller. Meyer argues that
Knight is not prior art because the ’404 patent claims are
supported by its parent’s specification and thus entitled to
the earlier filing date. We review a written description
determination for substantial evidence. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991). The
parent’s specification discloses vertical expellers having a
height approximately equal to the height of the discharge
opening. ’236 patent at col.3, ll.35-45; col.6, ll.34-35;
FIGs. 1-4; 7, 8, 11. Nowhere does the parent disclose
shorter vertical expellers. As such, substantial evidence
supports the Board’s determination that the parent’s
specification fails to convey with reasonable clarity to one
skilled in the art that the inventors were in possession of
the shorter expellers when the parent was filed.

     Meyer takes issue with the Board’s conclusion that
the full-height expeller disclosed in Knight could render
its claims obvious, yet the full-height expeller disclosed in
the parent does not support the claims. Meyer asserts
that the Board “failed to consider the possible conflux of
obviousness and the written description. The Board has
not shown why the two principles cannot meet at a point
at which both the obviousness principle and the written
description principle may be applied interchangeably.”
But whether the ’404 patent’s “at least one-half the
height” limitation reads on a full-size expeller such as the
IN RE MEYER MFG CORP                                     6


one disclosed by Knight is a different analysis from
whether the parent’s disclosure of a full-size expeller
meets the written description requirement. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) (en banc) (“[A] description that merely renders
the invention obvious does not satisfy the requirement.”)
(citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72
(Fed. Cir. 1997)). Meyer also argues that the discharge
opening defines an upper limit to the “at least one-half
the height” limitation in the ’404 patent claims. The
Board, however, correctly construed the “at least one-half
the height” limitation to read on all expellers having a
height larger than one-half the discharge opening.

    Meyer further argues that Knight is not prior art be-
cause the ’404 patent claims are entitled to a conception
date of no later than March 24, 1994, when Meyer at-
tempted to amend pending claims in the parent to include
the half-height expeller limitation. While the attempt to
amend the claims of the parent may establish conception,
to antedate a reference, Meyer must show earlier concep-
tion and diligence from his conception until his subse-
quent filing of the CIP.

     We review a finding regarding diligence, which is a
question of fact, for substantial evidence. See Monsanto
Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed.
Cir. 2001). Merely asserting diligence is not enough; a
party must “account for the entire period during which
diligence is required.” Gould v. Schawlow, 363 F.2d 908,
919 (CCPA 1966). The Board is correct that the Amend-
ment C affidavit with a conclusory assertion of diligence
is insufficient. Meyer is left with an unexplained gap of
just over two months. “We may surmise that appellant
was probably diligent, but mere surmise cannot take the
place of proof.” Gould, 363 F.3d at 919 (internal quota-
7                                      IN RE MEYER MFG CORP



tion omitted) (refusing to excuse a two-month lapse).
Absent such proof, we find that the Board’s determination
that Meyer failed to show reasonable diligence is sup-
ported by substantial evidence.

    Meyer next argues that the examiner erred in refus-
ing to enter the second round of § 1.131 affidavits be-
cause, contrary to the examiner’s assertion, the affidavits
were not filed after the filing date of the notice of appeal,
and thus should have been held to the more lenient
standard of 37 C.F.R. § 1.116(e). When filing a Rule 131
affidavit or other evidence after a final rejection but
before or simultaneously with filing a notice of appeal, the
patentee is required to show good and sufficient reason
why the submission is necessary and was not presented
earlier. 37 C.F.R. § 1.116(e). But if the patentee submits
an affidavit or other evidence after filing a notice of
appeal, the examiner must also determine that the sub-
mission overcomes all rejections under appeal. 37 C.F.R.
§ 41.33(d).

    The USPTO responds that this question is not prop-
erly before the court because, under 37 C.F.R. § 1.127 and
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002), the
refusal to enter an amendment after final rejection is a
matter of the examiner’s discretion. Thus, the USPTO
concludes that if Meyer believed that the examiner
abused that discretion, Meyer should have petitioned the
Director of the USPTO under 37 C.F.R. § 1.181. If the
USPTO then denied that petition, Meyer could appeal to a
district court and ultimately to this court.

    Though the examiner might well have erred by assert-
ing that Meyer’s second round of affidavits were filed
after the notice of appeal and by applying the stricter
standard recited in § 41.33(d), we cannot reach that issue
IN RE MEYER MFG CORP                                      8


in this appeal. Although § 1.127 and Berger expressly
address amendments to the specification or claims, and
not affidavits, Meyer was required to first seek remedy by
petition. As we said in Berger:

   There are a host of various kinds of decisions an
   examiner makes in the examination proceeding--
   mostly matters of a discretionary, procedural or
   nonsubstantive nature--which have not been and
   are not now appealable to the board or to this
   court when they are not directly connected with
   the merits of issues involving rejections of claims,
   but traditionally have been settled by petition to
   the Commissioner.

279 F.3d at 984 (quoting In re Hengehold, 440 F.2d 1395,
1403 (CCPA 1971) (internal quotation marks omitted).
Furthermore, the Manual of Patent Examining Procedure
(MPEP) informs patentees undergoing reexamination
that “[r]eview of an examiner’s refusal to enter an affida-
vit as untimely is by petition and not by appeal to the
Board of Patent Appeals and Interferences.” MPEP
§ 715.09 (citing In re Deters, 515 F.2d 1152 (CCPA 1975));
see also MPEP § 2265 (“[A]ffidavits submitted after final
rejection are subject to the same treatment as amend-
ments submitted after final rejection.”). As such, we
cannot now address the examiner’s apparent error.

                       CONCLUSION

   For the foregoing reasons, we affirm.

                       AFFIRMED
9                       IN RE MEYER MFG CORP



                COSTS


    No costs.
