BPAI requirements for Examiner consideration of declarations

Takeaway: If you submit evidence during prosecution and the Examiner dismisses the evidence without a proper explanation or even ignores it outright, consider an appeal. Although an Examiner is allowed to be unpersuaded by evidence presented by an Applicant, evidence must nonetheless be given proper consideration. Evidence often takes the form of a § 1.132 declaration, though it can also include information in the specification itself — but evidence is something other than mere attorney argument.

Here is a sample of BPAI decisions finding the Examiner did not properly consider the evidence.

Ex parte Malone: The claims in Malone were directed to a lamp housing including a substrate and a conductive layer of a specified thickness. The Applicant submitted a § 1.132 declaration discussing each of the references used the obviousness rejection and explaining why the claimed subject matter was not obvious in view of specific teachings in each reference. In the Advisory Action, the Examiner found that the declaration was insufficient to overcome the rejections because it stated only conclusions. In the Appeal Brief, the Applicant argued that the declaration did not state only conclusions, but instead explained in detail why a POSITA would not understand the prior art to teach or suggest the claim elements at issue. The Board chastised the Examiner for a "largely dismissive" response to the Applicant's § 1.132 declaration which presented evidence of non-obviousness. The Board then reversed the obviousness rejection "since the Examiner did not properly consider the submitted evidence."

Ex parte Rapp: The claims in Rapp were directed to a food product. The Applicant submitted a § 1.132 declaration as evidence of long-felt need and commercial success. The Examiner's Answer did acknowledge that the Appellant had presented rebuttal evidence, but then stated: "However, the claimed composition and process has been shown and would have been obvious to make such a product as shown above." The Examiner's treatment of the declaration led the Board to reverse the obviousness rejection, characterizing the Examiner's response to the declaration as "largely dismissive."

Ex parte Ramdsen: In this chemical case, the evidence took the form of experimental results in the Appellant's specification. The Appellant used this data as evidence of unexpected results, rebutting the Examiner's prima facie case of obviousness. The Examiner did not comment on the evidence in the Advisory Action or Examiner's Answer. The Board reversed the obviousness rejection because "the Examiner has provided no statement that this evidence has been considered, much less identified reasons as to why the Examiner believes that the evidence of obviousness when considered anew in light of all of the Appellants’ evidence of nonobviousness weighs in favor of obviousness."

Ex parte Donnelly Corp.: The claim element at issue in this case was an adhesive compound. To rebut a prima facie case of obviousness, the Appellant submitted several § 1.132 declarations as evidence of unexpected results and commercial success. The Examiner's Answer acknowledged the declarations then went on to state "Appellant did not show unexpected results over silicone resins." The Answer also criticized the evidence as not being commensurate in scope with the claims. The Board reversed the rejection because the Examiner did not explain why the evidence was insufficient:

[T]he Examiner states that Appellant did not show unexpected results over silicone resins. But this conclusory statement does not explain why the relied-upon evidence, which included test results comparing epoxy resin with silicone resin, is insufficient. The Examiner further argues that the evidence must be commensurate in scope with the claims. Again, however, it was incumbent upon the Examiner to explain, in a meaningful way, why the evidence offered in support of nonobviousness was not sufficient to reasonably support the scope of the claims. Indeed, it is not entirely clear from the Examiner’s position what additional experimentation would have been necessary to address the Examiner’s concerns. In a similar fashion, the Examiner dismissed Appellant’s evidence offered in support of commercial success without any meaningful discussion based on facts. Thus, the actual bases for the Examiner’s perceived deficiencies in the evidence are left to speculation.
(Ex parte Donnelly Corp, pp. 1415.)