Wednesday, February 5, 2014

Means Plus Function and Patent-Eligible Subject Matter: Conflicting Opinions at the PTAB

Posted by: Adam Ellsworth

The MPEP contains a very specific rule at section 2181(II)(B) directed to the interpretation of means-plus-function claims to determine if the claim is directed to patent-eligible subject matter. This section states that means-plus-function limitations should not be interpreted as including non-structural (e.g. software only) embodiments. This rule appears to be an exception, or a carve-out, of the general rule that if a claim covers both statutory and non-statutory embodiments under the broadest reasonable interpretation, the claim is directed to non-statutory subject matter. (See MPEP 2106(I)).

Below are two cases decided by the PTAB that were each faced with means-plus-function claims, and each applied a different rule to arrive at opposite conclusions.

In Ex parte Walker, Appeal No. 2010-012277 (Decided June 14, 2013), the claim-in-question was as follows:

44. A computer-implemented apparatus in a server for inserting a content into a content stream for rendering on a mobile user device, the apparatus comprising:
first means for generating an annotation parameter having a content identifier and an insertion point indicator;
second means for inserting the annotation parameter into the content stream; and
third means for transmitting to the mobile user device the content to be inserted at the mobile user device and being associated with the annotation parameter, before transmitting the content stream to the mobile user device.
Regarding the terms "server" and "mobile user device" in the preamble, the Board did not address these terms in detail, and instead stated only: "We are not persuaded of error." Regarding the "means-plus-function" limitations in claim 44, the Board cited MPEP 2106(I) which states that claims covering both statutory and non-statutory embodiments are directed to non-statutory subject matter.  The Board also stated that the "means" could be wholly embodied in software, and the Board sustained the rejection of the claims under 35 U.S.C. 101. Ultimately, the Board affirmed all the rejections under 35 U.S.C. 101, and affirmed only some of the rejections under 35 U.S.C. 103(a).

Ex parte Hillis

On the other hand, in Ex parte Hillis, Appeal No. 2010-007389 (Decided June 21, 2013), the Board arrived at the opposite result regarding the patent-eligibility of claims including means-plus-function language. In Hillis, the claim-in-question was as follows:

17. A system comprising:
means for determining an organization of at least one content of at least one spatial data storage system; and
means for defining a schedule of content transmission in response to the organization of the at least one content of the at least one spatial data storage system, the schedule expressly identifying the content by one or more times.
In each case, the claim-in-question included means-plus-function limitations having corresponding physical structures described in the specification. However, in Hillis, the Board cited the Federal Register at 76 Fed. Reg. 7168 (Feb. 9, 2011), which corresponds to MPEP 2181(II)(B). This section states, in a relevant part:
"Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation."
The Board stated that, according to the rules set forth in the Federal Register, the means-plus-function limitations should not be construed to encompass software embodiments. The Board held that the claims-in-question were directed to patent-eligible subject matter and reversed the rejections under 35 U.S.C. 101, although the Board upheld the Examiner's prior art rejections of the claims under 35 U.S.C. 102.

My two cents:

I think the panel in Hillis got it right here. While the panel in Walker applied a general rule of claim construction, MPEP 2181(II)(B) carves out a specific exception in the case of means-plus-function language. Examiners still apply the "broadest reasonable interpretation," but it is not reasonable to interpret specification-supported means-plus-function limitations as patent-ineligible subject matter, since, by definition, these limitations are directed to "structures" and "materials" described in the specification.

Ideally, this type of rejection would be handled prior to appeal by citing MPEP 2181(II)(B) to the Examiner, because the explicit language in the MPEP is more persuasive to an Examiner, for whom the MPEP is their guide for examining applications, than for a PTAB panel. The PTAB is more likely to cite Federal Circuit or Supreme Court precedent rather than the MPEP, and may disregard the Federal Register or MPEP, as the panel did in Ex parte Walker.

There's an interesting prologue in Walker: the Examiner contacted the Appellant after issuance of the Board's decision, and the Appellant agreed to cancel the claims for which the Board upheld rejections under 35 U.S.C. 103(a). For the remaining claims, including claim 44, above, the Examiner issued a Notice of Allowance, without substantial amendments to the claim, effectively withdrawing the rejection under 35 U.S.C. 101 after it was upheld by the Board. 

Monday, February 3, 2014

Board says newly cited reference is not a new ground of rejection since it's in the priority chain of previously used reference

Takeaway: The Applicant appealed an obviousness rejection based on three references, and argued that the primary reference Huang did not teach an element as asserted by the Examiner. The Examiner's Answer "further submitted" another reference, Dresti, "to clarify any doubt as to the scope of [the primary reference's] disclosure." The Answer noted that Dresti was in the priority chain of Huang. The Applicant filed a Reply Brief, arguing that the introduction of Dresti on reference for the first time in the Answer was improper, but not substantively addressing the teachings of Dresti. The Board affirmed the rejection and noted in passing that "Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection."


Ex parte Hardacker
Appeal 2012007118; Appl. No. 11/970,8581; Tech. Center 2400
Decided:  September 30, 2013

The application on appeal was directed to a system including a TV remote control. One of the limitations at issue read: "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element."

The Examiner rejected the independent claims as obvious over a combination of three references: Huang, Woolgar, and Day.

On appeal, the Applicant argued that Huang did not disclose the "single manipulation" element highlighted above. More specifically, the Applicant argued that Huang taught a single keypress controlling a single component, rather than “controlling two separate components with a single key press.”

The Answer included a rebuttal with quotes to several specific sentences of Huang that allegedly disclosed a single keypress controlling multiple components. After quoting these teachings in Huang, the Answer relied on another reference, Dresti:

     Furthermore, the Examiner submits the teachings of Dresti et al. (US 2003/0103088 A1 "Dresti") for which Huang is a continuation-in-part (related US Application 10/288,727). Dresti details the "home theater" and "macro" functions of Huang by disclosing that ... [quote omitted].
     It is the Examiner's position that Huang's disclosure of "home theater" and "macro" functions "grouped under a single designator" sufficiently addresses the disputed limitations of Claim 1. However, to clarify any doubt as to the scope of Huang's disclosure, the Examiner further submits the teachings of Dresti to provide explicit evidence that Huang's macro functions would read on "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element. .." (as summarized above). Therefore, even as narrowly argued by Appellant, the Examiner submits that the Huang's concepts of "home theater" and "macro" functions address the disputed limitation of Claim 1.
In a Reply Brief, the Applicant argued that the Examiner's reliance on Dresti was improper:

     [T]he Examiner discusses a new reference - Dresti. Appellant notes that the discussion of Dresti may only be found in the rebuttal section of the Answer. The use of this new reference has not heretofore been made, nor does it form part of the formal rejections that are the subject of this appeal. To the extent that the conferees are relying on the stated grounds of rejection, the discussion related to the newly-discovered teachings is irrelevant and has not been seasonably presented. To the extent that the conferees are trying to back into a new ground of rejection without saying so, a new ground of rejection in an Examiner's Answer is not permitted without the approval of the Technology Center Director, MPEP 1207.03.
     Accordingly, the rebuttal section either contains a citation to and discussion of a reference not heretofore relied on, and consequently is irrelevant to the issues being appealed, or it is an attempt to cloak a new rejection under the guise of purported teachings of a reference slipped in only during the rebuttal stage of an Answer, and consequently is illegitimate under the rules. In either case, the rejections merit reversal.
The Board affirmed, finding that "Huang as further described in Dresti" would have "at least suggested" the limitation at issue:

     Huang describes controlling multiple appliances in a “home theater” or “room” mode, as well as user programming of remote control keys, assigning appliances to various remote control modes, creating macros, and assigning related variable functions to a single designator. Further, as explained by the Examiner (Ans. 23), it is known in the prior art to use macros to control multiple appliances using a sequence of commands by pressing a single button, as demonstrated by Dresti. Thus, we conclude, as the Examiner does, that Huang (as further described in Dresti) would have at least suggested controlling multiple components using a single remote control button press.

The Board also quickly dismissed the Applicant's argument that Dresti was a new reference that formed part of a new ground of rejection.
Dresti demonstrates that the control of multiple components using the press of a single button is known in the art. Further, Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection.
My two cents: The Board got this one wrong – reliance on Dresti should have been a new ground of rejection – but the Applicant didn't handle it properly.

The standard for determining whether a rejection is new is whether appellant has had before the PTO "a fair opportunity to react to the thrust of the rejection." In re Jung, 637 F.3d 1356, 1365 (Fed.Cir.2011), quoting In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). The way I see it, the Examiner's Answer changed the thrust of the rejection by newly relying on Destri. The Applicant wasn't aware during prosecution that the Examiner was relying on additional teachings in Destri, and thus didn't have an opportunity to rebut these findings. The Board seems to think that the family relationship between the actually-relied-upon reference (Huang) and the newly-relied-upon reference (Destri) meant that the Applicant was already on notice. I just don't see what Destri's presence in Huang's chain of priority has to do with notice.

The Applicant noted in the Reply Brief the introduction of Destri in the Answer, and argued there that it was improper and that the Board should therefore ignore Destri. However, the correct procedure for Applicant to challenge a new ground not designated as such is to file a Petition under § 1.181. (True under the old appeal rules and under the new ones effective Jan. 2012, the difference being that now the Petition tolls the time period for filing a Reply Brief.)

Monday, January 20, 2014

Board decisions involving the Wayback Machine to show status as prior art (Part II)

In my last post (here), I discussed Examiner usage of an archived web page as a reference, and noted that the Board generally finds this usage acceptable. That post also illustrated a few unsuccessful arguments against this use of archived web pages in a rejection.

Today's post deals with the relationship between the actual reference, as identified by the Examiner, and the archive pages produced by the Examiner. In today's cases, the Board focused on corroboration between the archive pages and the asserted reference -- in other words, did the evidence show that the pages from the archive (dated before the critical date) actually correspond to the reference identified in the rejection (dated after the critical date). The Board upheld prior art status only when the archive pages in the record were identifiable as earlier versions of the reference page.

In Ex parte Benveniste, the Board reversed because the Examiner had not shown corroboration between the web page retrieved during examination and the archived version. During prosecution, the reference was referred to as "" The List of References Cited listed two non-patent documents:
  • "Internet Wayback Machine" [online] Retrieved on 2012-03-13 [during examination]. Retrieved From:
  • "Motivators Promotional Products" [online] retrieved on 2012-03-13 [during examination]. Retrieved from   Tab12.

On appeal, the Applicant argued public dissemination. ("The Examiner has not shown that a person in the field of emergency repair plugs for boat hulls would have come across the cited reference prior to the critical date.") The Applicant acknowledged the Examiner's reliance on the Wayback Machine (rather than the current Motivators page) to show prior art status, but noted that "Appellants have not been successful at accessing the web page address provide by the Examiner."

The Board reversed on the basis of a lack of corroboration between the web page retrieved during examination and the web page retrieved via the Wayback Machine. The Board explained:
The page cited to by the Examiner in the Final Office action currently redirects to: The Examiner cites as evidence of the effective date of the page entered into the file wrapper Mar. 23, 2012. There is nothing corroborating the page copied by the Examiner with the date of the page provided by the Wayback Machine.
(Emphasis Added.)
The Board found that without such corroboration, the Examiner had not shown that the Motivator reference was prior art.

The Applicant in Ex parte Aguilera tried to use date information in the footer of the archive print out to show a lack of corroboration, but the Board found the Applicant had misunderstood the date. During prosecution, the reference was first identified in the Office Action as "Minwen Ji, 'Instant Snapshots in a Federated Array of Bricks,' Internet Systems and Storage Laboratory, HP Lab, Palo Alto, January 28, 2005." The Applicant traversed, noting that Ji itself referred to the date as an "internal accession date," and while Ji indicated that the publication was "approved for external publication," Ji did not give a publication date.

The next Office Action updated the list of References Cited to include "Internet Archive Wayback Machine April 20, 2005" and included 2 pages from the Wayback Machine. The Response to Arguments section then explained that the Wayback Machine showed that the reference was available on the HP Technical Reports website in Feb. 2005 (before the critical date).

The Applicant filed an appeal and repeated earlier arguments. Notably, the Appeal Brief did not address the Wayback Machine evidence.

The rejection in the Examiner's Answer once again identified the reference using a Jan. 2005 date, but the Response to Arguments section "reiterated" that "the HP website and the Internet Archive Wayback Machine both provide evidence that Ji's  reference was available to the public during the year of 2005." The Answer also included a page from the Wayback Machine, listing bibilographic information and an abstract for the Ji publication. The footer on this page identified the source (a Wayback Machine URL) and also a current date (2009).

Finally, the Answer also included a "HP Technical Reports" page showing a list of technical reports, including "HPL-2005-15 - Instant Snapshots in a Federated Array of Bricks ; Ji, Minwen." According to the Examiner, the presence of "2005" in the document name  indicated that "Ji's reference was available to the public as shown by the HP website in 2005." The Examiner further asserted that the Technical Reports page was obtained using the link, and the presence of "2005" in the URL was a further indication of the prior art status of the Ji publication. 

The Applicant filed a Reply Brief addressing both the Wayback Machine evidence and the HP Technical Reports page. According to the Applicant, the current date (2009) on the Wayback Machine print-out "indicates the publication date of the version being shown". Finally, the Applicant argued that the presence of the year 2005 in a URL does not show the reference was publically available in 2005, but showed only that certain references that available at the time of examination had a "written date" of 2005.

The Board found that the Examiner's use of the Wayback Machine was enough evidence that the Ji reference was prior art:
We find the Appellants’ arguments unpersuasive regarding the Wayback Machine evidence as one of ordinary skill in the art would understand that the date highlighted by Appellants in the bottom right hand corner, i.e., 12/22/2009, merely indicates a date of printing a hardcopy, not the date of publication. Furthermore, the Archive evidence presented by the Examiner clearly shows dates as early as 2005.

In Ex parte Rowse, the Board found that the URL of the archived pages identified those pages as earlier version of the reference. The rejection identified the web page reference as ", retrieved from the Internet Archive Wayback Machine <>, 6/29/1998." The Applicant traversed the rejection by arguing that "the Internet Archive is not prior art" because "the 'Internet Archive Wayback Machine' from which the Xactware reference was taken was not publicly available until [after Applicant's filing date.]" In the next Office Action, the Examiner clarified that "the web page (and date published) is meant to serve as prior art -- not the internet archive."

On appeal, the Board analyzed the Examiner's prima facie showing of Xactware as prior art. The Board first noted the reference identified by the Examiner was the archived Xactware web pages, not the pages retrieved from the Xactware site at the time of examination. The Board further noted that the pages themselves showed an archive date:
Based on the Uniform Resource Locator (URL) content at the bottom of each page, pages 1 through 15, as numbered by the Examiner, appear to represent web pages that were published (publicly available) on the “” site in the year 1998.
In view of this prima facie showing that the reference was prior art, the Board looked to the Applicant for a rebuttal and found none:
     In the instant case, Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
.... On this record, we conclude that the Examiner properly considered Xactware to represent prior art with respect to the invention of the rejected claims.

My two cents: If you're not familiar with the Wayback Machine, here's a very brief explanation of the interface.

Typing in a web address from the main page ( gives you a timeline/calendar view of all the archived pages for that site.

Clicking on a specific date retrieves the page as it existed on that past date:

Note that the URL of the retrieved page in the browser address bar
encodes the name of the archived site and the archive date.

Sunday, December 29, 2013

Board decisions involving the Wayback Machine to show status as prior art (Part I)

Long ago I wrote a series of post discussing the use of web pages as prior art. In one of those posts (here), I mentioned the use of  (a.k.a. the "Wayback Machine"), which is an archive site of web pages as they existed in the past. An Examiner can't allege that a web page was available as of your application's past filing date if all he has is the page retrieved as of the examination date, However, he can use the Wayback Machine to navigate to that same web page, retrieve a copy as it existed as of a particular past date, and use the page retrieved via the Wayback Machine as the reference.

Since my original post back in 2009, I've come across a few more cases where the Applicant tried to disqualify a reference on the basis of its retrieval via the Wayback Machine. Generally, it's a losing battle: as long as the Examiner identifies the page and retrieval date in the proper manner, the Board views such references as "printed publications" under § 102(b) or § 102(a).  In today's post, I'll discuss a few of these Board decisions, and highlight some unpersuasive arguments made by Applicants.

To qualify as a "printed publication," case law requires that the reference be disseminated to persons in the art. For example, MPEP § 2128 states that "[a] reference is proven to be a 'printed publication' 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)."

In Ex parte Rowse, the Applicant attacked the Examiner's use of the Wayback Machine on this basis. The Applicant argued that "the Examiner has provided no evidence that the Xactware reference qualifies as a printed publication other than asserting that 'the Internet Archive is a tool used to access internet pages that were published and publicly accessible in the well-documented past.' " Next, the Applicant referred to the "dissemination" requirement in MPEP § 2128, and then continued as follows:
Regarding "public dissemination," pages on the World Wide Web are not "disseminated" - they are "browsed" using a "Web browser" - the antithesis of dissemination. Many web pages are never even browsed. Regardless, the Examiner has submitted no evidence to show that the Xactware reference was ever "disseminated" to members of the public, or "browsed" by members of the public, prior to the applicants' date of invention. Regarding "public availability," the Examiner has made no showing that the Xactware reference was catalogued, indexed or searchable in any publically-available database prior to the applicants' date of invention.
(Emphasis added.)
The Board in Rowse found that the Examiner had made a prima facie case of the reference's status as prior art. The Board did not specifically address the dissemination argument, addressing instead the general argument that the Examiner had not provided evidence of publication. The Board first noted that in an ex parte proceeding, the rules of evidence are relaxed when demonstrating prima facie unpatentability. The Board then explained that
Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
(Emphasis added.)
The Board has also been unpersuaded by Applicant arguments that the Wayback Machine is not appropriate to show prior art status because it's not reliable. In Ex parte Hicks, the Applicant argued that “per the explicit terms of use for the Internet Archive Wayback Machine [mentioned on the archive site itself], the January 21, 2005 archive is not guaranteed to be accurate, current, complete, reliable, secure or error-free.” (Emphasis added.) The Applicant further asserted that "the Internet Archive does not guarantee that the data listed for January 21, 2005 is what was actually archived or if anything at all was even archived for that date." The Applicant concluded that the Wayback Machine is therefore "not a valid or reliable resource for establishing prior art."

The Examiner's Answer noted that Applicant had not provided any evidence to demonstrate that the archive date was invalid or that the web page was not accessible to persons of skill in the art. The Applicant filed a Reply Brief stating that:
Notwithstanding the well-recognized difficulty of proving a negative, Appellants' representative has performed an Internet search and has been unable to locate any other evidence indicating that the FFHD reference was  published  prior  to Appellants'  filing date. The only evidence of record in support of a prior publication date is from a single third party source that per it's own terms of use may not be accurate.
The Board in Hicks appeared to address the Applicant's unreliability argument by shifting the burden to the Applicant:
Electronic documents are archived on the Wayback Machine and are dated as of the archived date of the website. Appellants do not indicate that the archive date provided for FFHD by the Wayback Machine was generated other than in the normal course of operation of this site. There is no indication that this date was arbitrarily assigned or that the origin of document itself is suspect.
The Applicant in Hicks also tried another argument, characterizing the "URL date indicated by the Internet Archive Wayback Machine" as "nothing more than a third party assertion."
A publication date cannot be established based on an uncorroborated third party assertion unsupported by any affidavit or declaration. If all that was required to establish a publication date was a third party assertion unsupported by any affidavit or declaration, then any reference could be turned into prior art merely by finding a third party willing to place a prior publication date on the document. Such uncorroborated third party assertions unsupported by any affidavit or declaration are not sufficient evidence.  If an Applicant  wishes  to  submit an assertion by a third  party as evidence, e.g., in support of a Rule 131 or 132 submission, then the third party assertion is required to be supported by an affidavit or declaration. The Examiner should be held to no less of a standard. Here, the Examiner has not obtained any affidavit or declaration from the Internet Archive Wayback Machine supporting the publication date of  the FFHD reference. Nor has any other corroborating evidence been supplied by the Examiner despite repeated challenges  by the Applicant.
The Board in Hicks was not persuaded by this argument either. After noting that a PTO proceeding is not bound by the stricter rules of evidence of a judicial proceeding, the Board concluded that "without more, we decline to agree with Appellants that reliance by the Examiner on FFHD was improper."

As noted above, the Board generally allows the use of the Wayback Machine to show prior art status,
as long as the Examiner identifies the page and retrieval date in the proper manner. In a future post, I'll discuss a few cases where proper identification was at issue.

Thursday, December 19, 2013

Board explains that when functional language is coupled with program structure, prior art structure be capable of performing the function without further programming

Sometimes when an Examiner sees a "controller" claimed in combination with functional language, he asserts that a controller in the reference reads on the claim language even though it doesn't perform the function. The Examiner's reasoning is that any controller is "capable of" performing the claimed function, and apparatus claims must distinguish on structure not function.

Last year I blogged here about a number of Board decisions that reversed an Examiner for using this reasoning. And I recently ran across another one of these reversals, in Ex parte Stein. Stein involved claims to an "immunoassay analyzer" which recited "a computer controller which [functional limitations]". I think this language in the Board's decision discussing the relevant case law makes a good template for arguing against such rejections.
     Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the controller must possess the necessary structure, hardware or software, for example, the programming, to function as claimed.
     The Examiner’s analysis appears to be based upon a finding that Hanawa’s controller would have been capable of performing the claimed functions upon further modification, such as the installation of software (Ans. 17, 18). While it might be possible to install software and/or hardware that would allow Hanawa’s controller to perform the functions of controlling movement, tracking location and determining the path for each of a plurality of test vessels as required in claim 1 and 13, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc. , 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller,” see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.
Note that the Board distinguishes In re Schreiber, which was purely mechanical, and which seems to be a favorite among Examiners. The Board relies instead upon more recent cases that involve electronics.

Thursday, December 12, 2013

Example of a swear-behind (1.131) declaration executed by an assignee

Takeaway: A §1.131 declaration used to swear behind a reference must be signed by all the inventors, unless "it is not possible to produce the declaration of the inventor." (MPEP 715.04(I)(D).) In such cases, "an assignee or other party of interest" can sign. The MPEP doesn't give much additional guidance on how a swear-behind declaration executed by the assignee is any different than one executed by an inventor, but an example of an assignee swear-behind can be found in Reexam 90/009,435 (available on Public PAIR).


Appl. 90/009,435
Volterra Ex parte Reexamination
Filing Date: April 6, 2009
(File history available on Public PAIR.)

The Patentee in an ex-parte reexam submitted a declaration under §1.131 to swear behind a reference. However, because one of the two inventors was deceased, the Applicant accompanied the §1.131 Declaration with a Petition under §1.183 requesting waiver of the signature of the unavailable inventor. (See MPEP 715.04(I)). The §1.131 signed by the remaining inventor included a statement that his co-inventor was deceased. The §1.183 Petition explained those facts, then stated:
Thus, for at least these reasons, the Patent Owner submits that this is an extraordinary situation, in which justice requires suspension or waiver of any requirement that all inventors sign the declaration. The Patent Owner requests that a suspension of the rules be granted under 37 C.F.R. § 1.183 and that the declaration under 37 C.F.R. §1.131 be accepted with the signature of the sole surviving inventor, Andrew J. Burstein.
The Petitions Office denied the Petition because an "alternative avenue that complies with the rules is available to obtain the requested relief." The Petition Decision explained that §1.131 specifically allows the Patent Owner to sign the declaration during a reexam. The explanation in the Decision also referred to MPEP 715.04(I)(D), which indicated that "an assignee, or other party in interest" can sign the declaration "when it is not possible to produce the declaration of the inventor."

After the Petition was Denied, the Applicant then resubmitted the §1.131 declaration that was signed by the surviving inventor, and submitted a new §1.131 declaration that was executed by the assignee. The assignee declaration read as follows:
Declaration of Prior Invention by Volterra Semiconductor  under 37 C.F.R. §1.131

I, DAVID OH, hereby declare:
1. I am the General Counsel and Vice President of Legal Affairs of Volterra Semiconductor Corporation, the assignee of the entire right, title, and interest in each of U.S. Patents No. 6,278,264, ("Flip-Chip Switching Regulator") and No. 6,462,522 ("Transistor Pattern for Voltage Regulator"), henceforth "the Burstein Patents." I am empowered to act on behalf of Volterra Semiconductor Corporation.
2. Andrew J. Burstein and Charles Nickel are co-inventors of the Burstein Patents.
3. Charles Nickel is deceased. Because it is not possible to obtain or produce a declaration by Charles Nickel, and because the assignee may make such a declaration in a reexamination proceeding even if the inventors are available, I make this declaration on behalf of Volterra Semiconductor Corporation under 37 C.F.R. §1.131(a) and MPEP 715.04(I)(D).
4. On information and belief, Andrew J. Burstein and Charles Nickel conceived of the inventions described in the Burstein Patents in the United States, and reduced them to practice, prior to February l, 2000, as described in Andrew Burstein's declaration entitled, "REPLY DECLARATION OF ANDREW BURSTEIN IN SUPPORT OF VOLTERRA SEMICONDUCTOR CORPORATION'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION," ("the reply declaration") dated September 25, 2009, the entirety of which is incorporated into the present declaration. The reply declaration and its accompanying Exhibits A-P were filed in each of the above-referenced reexamination proceedings in conjunction with the DECLARATION OF PRIOR INVENTION OF ANDREW J. BURSTEIN UNDER 37 C.F.R. §1.131 ("the Burstein Rule 131 declaration") dated February 22, 2010.
5. A copy of the Burstein Rule 131 declaration and the reply declaration (with supporting Exhibits A-P) is attached and forms part of the present declaration, with all statements therein declared again in the present declaration.
[Final section acknowledging penalties for willful false statements, referring to 18 U.S.C. §1001.]
The Examiner found the §1.131 declaration to be sufficient to remove the reference.

My two cents:  In the Volterra case, the assignee declaration merely stated that the inventor was dead. The assignee declaration did not include documentary evidence (a death certificate?) although the declaration of the surviving co-inventor did include a corroborating statement.

Note that this lack of documentary evidence is a special circumstance peculiar to reexam. The §1.131 rule itself specifically allows "the owner of the patent under reexamination" to sign the declaration. Notably, the rule also distinguishes between the patent owner and other types of non-inventors allowed to sign: "party qualified under §§ 1.42 [dead inventor] , 1.43 [legally incapacitated inventor], or 1.47 [missing or uncooperative inventor]." 

So outside of reexam, a swear-behind executed by the assignee is submitted under the dead/legally incapacitated provision, or the missing/uncooperative provision. Which means you definitely need to do more than state "inventor can't be found." You need to explain why it's not possible for the inventor to sign, and submit documentary evidence supporting this. MPEP 715.04(I)(D) explains that the evidence is like that you'd submit under the missing/uncooperative provision of § 1.47.
 Proof that the non-signing inventor is unavailable or cannot be found similar to the proof required for a petition under 37 CFR 1.47 must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).
As far as the contents of the assignee swear-behind declaration itself, I would look to this Voltera reexam as an example. The sections that differ from an inventor declaration are the description of the signer's position/role at the assignee, and the specific "empowered to act" statement (the first paragraph). And though it may seem a little strange for the signer (here, the General Counsel) to attest to actions of the inventor in the fourth paragraph, that's what a swear-behind is – attestation that the inventors conceived/reduced to practice. I note that in this particular example, the statement about inventor actions is made "on information and belief" and specifically refers to documentary evidence.

Finally, the Petition Decision also noted that "authority to take action by the assignee Volterra has already been established with the filing of a statement under 37 CFR 3.73(b)." In the Volterra case, this Right of Assignee statement was filed with the request for reexam. It's not clear whether you should file such a statement when submitting an assignee swear-behind during regular prosecution. I suppose it wouldn't hurt.