Wednesday, March 31, 2010

Case law on swear-behind declarations (Part II)

This is Part II in a series explaining what the BPAI considers to be a sufficient § 1.131 (swear behind) declaration. Part I (here) explained that to show actual reduction or conception, a § 1.131 declaration should tie the supporting documents to the claims. The BPAI decisions covered in Part I offered only general guidance on how to do this. Today I'll examine some decisions that are more helpful in explaining where the Applicant went wrong.

The general rule is that the evidence must show either conception of, or actual reduction to practice of, the claimed invention.

Actual reduction to practice requires proof of a physical embodiment or performance of a process that includes all limitations of the claims. See UMC Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987)
Conception is “the formation, in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is to be thereafter to be applied in practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).  

More specifically: 

Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice "amounts essentially to mere pleading, unsupported by proof or a showing of facts" and, thus, does not satisfy the requirements of  37 CFR 1.131(b). In re Borkowski, 505 F.2d 713 (CCPA 1974). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. 505 F.2d at 718-19.

The Board has consistently read In re Borkowski to require a mapping between the exhibits and the claims.

In Ex parte Mittleman, the Board criticized the insufficient declaration in some detail. The claims at issue were directed to a towable piece of luggage with an inventive handle. In addition to the handle, the claims also recited “a piece of baggage” and “at least one wheel connected to the piece of baggage, said wheel having a wheel rotation axis.” The exhibits to the declaration included CAD drawings and photographs of the handle. The Board explained that the declaration was insufficient because the claimed baggage and wheel were not in the drawings or in the photograph.

The Board then explained that simply providing drawings and/or photographs that included the claimed features is not enough, because the Appellants must also provide a mapping between information in the exhibits and claim limitations.

Even were we to accept as true that the computer-aided rendering accurately corresponds to every feature of the handle prototype, this statement fails to map the information in the affidavits to the claim limitations. In particular, not every feature of the prototype described by the named inventors is labeled in the computer-aided rendering. For example, the computer-aided rendering does not have the following items labeled so that they correspond to the description of the handle prototype: the handle, the handle grip, the hollow stem, or the intermediate member (Facts 15.d, 15.h). Further, neither the description of the prototype, nor the labels on the computer-aided rendering correspond to every limitation of the claims. For example, neither the prototype description nor the computer-aided rendering identify a telescoping arm portion such as recited in independent claim 1. Like the appellants in Borkowski, Appellants here have not sufficiently explained the contents of the exhibits. More specifically, Appellants have not mapped the features of the handle prototype to the claim limitations. Absent a clear explanation, Appellants’ affidavits are of little assistance in enabling us to determine if there had been an actual reduction to practice.
(Ex parte Mittleman.)

In Ex parte Draper, the Board noted the absence of a mapping between the declaration and the claims:
Here, Appellant provides no discussion in the Declaration explaining how the “LinkFinder.h” header file2 shown in Exhibit A describes the claimed invention. (FF 3). We find the submitted Exhibit A comment description merely reveals the declaration for a “ClinkFinder” class that processes a data stream against a set of parsing rules that further calls a specified “ClinkProcessor” to process each link identified by the parsing rules. (Declaration, Exhibit A, page 1) (FF 4). Therefore, we find Appellant’s proffered Exhibit A source code merely shows possession of the recited “parsing [of] one or more data objects of the data structure,” in the context of finding links. (Claim 1). In particular, we find Appellant’s Declaration does not show or explain how the “object access interface” recited in claim 1 has been reduced to practice. Likewise, we find Appellant’s Declaration fails to show or explain how the data elements that are identified and combined to “obtain one or more hyperlink addresses” have been reduced to practice. (See claim 1).

Additional guidance for the proper contents of a swear-behind can be found in decisions in which the Board found that the declaration was sufficient to prove conception. Some of these decisions specifically note a correspondence between the claims and the relied-upon documents.

For example, in Ex parte Cafar, the Examiner found the declaration ineffective to show conception because one of the claims included "a flat straightener," yet the drawings submitted with the declaration did not illustrate this feature. The Board disagreed, stating that "[e]ach limitation of claim 5 is described in the invention disclosure, including an express statement of a 'flat straightener'."
However, other Board decisions involve a declaration which does not specifically tie the disclosure to specific claim elements, yet the Board nonetheless approved of the swear-behind. In some of them, the Board made a (conclusory) finding of fact that the declaration and/or documents do establish conception. (Ex parte McDysan, the 37-page invention disclosure document was found to be "a description of Appellants’ invention as set forth in the subject application"; Ex parte Li, the 20-page invention disclosure document "established proof of conception."

In at least one decision where the approved-of declaration did not mention claim elements (Ex parte Cho), the Board reviewed the disclosure and made significant findings of fact on the record. The disclosure described the invention as follows: “[b]y adding multiple, repeating, numbers as a memory location for phone/pager numbers, users can easily associate someone’s numbers (office, home, cell, pager, etc.) into one set of memory locations (i.e. 5, 55, 555, 5555, etc.)” The declaration in Cho merely stated that the "claimed subject matter of the referenced patent application was the subject of a written disclosure [attached]." The Board nonetheless found that the declaration was sufficient to show conception because the subject matter of certain claims was "at least reasonably suggested in [the disclosure document]. Specifically, the invention disclosure document discusses storing various numbers—namely a cell phone number, a home number, an office number, and a pager number—to distinct memory locations (FF 9-10). These stored numbers, in our view, reasonably support the broader recitation of stored information or addresses."

Other Board decisions emphasize the importance of clearly explaining which facts are relied on for reduction, conception, and/or diligence. In Ex parte O'Connell, the Board noted that "[a]t best, Appellants’ Declaration evidences a 'conception' date of the invention prior to Li’s effective date. However, Appellants have not provided any evidence to support the due diligence requirement." And in Ex parte Vo, the Board chastised the Applicant for a confusing declaration that did not properly distinguish between reduction, conception and diligence:
The Rule 131 Declaration does not explainwhether Appellant is asserting (1) a reduction to practice prior to the effective date of the reference to be antedated and/or (2) conception of the invention prior to that date coupled with the requsite diligence. Instead, the Rule 131 Declaration asserts that Appellant “made the invention described and claimed in [Appellant’s] application prior to April 26, 2001." ...
Because the Rule 131 Declaration, e-mails, and letter fail to assert that the claimed method was performed prior to the [relevant date] as required to establish an actual reduction to practice prior to that date, the Examiner was correct to consider whether the evidence instead establishes conception prior to that date coupled with the requisite diligence. ...
[However, ] Appellant makes only the following arguments, which are germane to conception rather than diligence. (Emphasis added.)
This concludes my discussion of what the BPAI requires to show either conception or actual reduction to practice in a § 1.131 declaration. Part III will discuss diligence, which is the second part of what's  required when you choose to show conception rather than actual reduction to practice.


  1. To me, requiring the mapping of the claims is unnecessary. Under Section 1.131, "[t]he showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application." The purpose of the 131 exercise is to determine who was the first to invent. If the exhibit provides proof of conception, why does it have to be mapped out to the claims? It is fair to take away someone's valid patent rights because the BPAI is too lazy to determine that the claims are supported in the exhibit? Like Spike Lee says, they just need to "do the right thing,"

  2. >If the exhibit provides proof of conception,
    >why does it have to be mapped out to the claims?

    You agree that the exhibit must convey, to a POSITA, possession of each claim limitation, right? What you really take issue with is the "mapping", right? Because mapping sounds like a lot of explanation is required.

    I agree that the Board's requirement in Ex parte Mittleman was harsh, ie, saying that the CAD drawing wasn't enough, that the CAD drawing had to have a label showing each claim limitation.

    Seems like the Board was more reasonable in Ex parte Cho, where the Board did indeed review the disclosure and made significant findings of fact.

    Should you say very little in the swear-behind about the exhibits, hoping to get an enthusiastic Board who carefully reviews your exhibits? Certainly the litigators who assert your patent will be happy to have very few inventor statements on the record.

    But practically speaking, you have to get a patent before you can assert. And the price of getting a patent just might be putting more stuff than you'd like on the record.

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  4. Can someone direct me to good examples of 131 Declarations?


  5. I wrote about one good one here: