BPAI finds a swear-behind declaration that is good enough (Ex parte Test.com)

Takeaway: For an example of a swear behind (§ 1.131) declaration that the BPAI found convincing, see the reexamination appeal decision Ex parte Test.com. Note this one is an actual reduction to practice case, so no diligence is involved. This decision also shows that a declaration that does not show reduction to practice of every claim limitation can be still be sufficient if what is missing are "details which are obvious to one or ordinary skill in the art." (In re Spiller, 500 F2.2d 1170, 1178.)

Details: Earlier this year I wrote a series of blog posts on swear-behind (§ 1.131) declarations at the BPAI. (See Part I, Part II, and Part III.) In that same series, I also noted that a study by Patently O showed that the BPAI finds three-fourths of the swear-behind declarations that are at issue on appeal to be insufficient for one reason or another.

The reexamination appeal decision Ex parte Test.com, which found the swear-behind sufficient, is therefore worth a read. My earlier posts on swear-behind treatment at the BPAI stressed the importance of providing evidence, not just conclusory statements, and of tying the evidence to the claims. The Applicant in this case did just that. The declaration includes statements from 2 inventors asserting personal knowledge of reduction to practice, accompanied by 13 exhibits. The exhibits included press releases, promotion materials, screen shots of the software implementing the invention, and a licensing agreement between Test.com and the customer using the software. The declaration also includes statements by the inventors tying portions of the exhibits to particular claim limitations.

You can get a feel for what the Applicants relied on looking through the 7 pages in the Findings of Fact section of the BPAI decision. The Findings of Fact are arranged by exhibit. In these Findings of Fact, the Board summarizes the contents of the exhibit, followed by the declaration statement that relies on this exhibit. For example:

Exhibit 3
3-1. Exhibit 3 is a document from a press kit created by an advertising agency regarding the method of the present patent. (Exhibit 3, pp. 1, 2, see also Anderson Dec. 2).
3-2. Anderson declares that this press kit is dated prior to November 16, 1998 and “discloses that a private, secure corporate account can be used to administer established or customized tests online” which in conjunction with Exhibit 2, discloses limitations recited in claim 1. (Anderson Dec. 2, 3).

This application went to appeal because the Examiner found that the declarations were not sufficient. The Examiner found they were "[v]ague and general statements ... which 'amount[s] to mere pleading, unsupported by proof or showing of facts', and thus does not satisfy the requirements of 37 CFR 1.131." In particular, the Examiner took issue with the screen shots, finding them "to be isolated screen shots that do not provide factual evidence of the claimed invention."

The Board disagreed, and found that "the probative weight of the declarations and exhibits together, in their entirety, show Applicant's completion of an online testing system public operating online." The Board further noted that an Applicant is not always required to show reduction to practice of every claim limitation:

In Spiller, the court determined a Rule 131 declaration showing possession of the “basic invention,” or the “heart of the invention,” or “establish[ing] broadly possession of the invention,” can be adequate to antedate a prior art reference even if what is shown in the Rule 131 declaration does not include all of the limitations of the later-claimed invention. Id. As such, we find that Appellant has sufficiently demonstrated a reduction to practice through declarations and exhibits showing possession of the “basic invention” or the “heart of the invention.” Specifically, Appellant has shown news publication, promotional materials, and screen shots which show an online testing center (FF 1-1), adding new or editing existing test questions (FF 7-1), a fee for the test-taker (FF 11-1), revenue sharing (FF 5-2, 8-1), and private user accounts (FF 2-1, 3-2, 9-1). Additionally, the exhibits show, and declarations support facts clearly describing, a webpage which Appellant declares was online and available before November 16, 1998 depicting an online testing site depicting icons allowing a user to at least “take a test” and “create a test,” and go to their “account” and/or “private account” (FF 4-2, 4-3), which we find substantially support the broad limitations as claimed by Appellant. Thus,Appellant has shown a reduction to practice of his basic invention, which showing will also suffice as to claims differing therefrom only in details which are obvious to one of ordinary skill in the art. See In re Spiller 500 F.2d at 1178. 

My two cents: If you're preparing a swear-behind declaration and don't have a lot of experience in this area, do yourself a favor and read Ex parte Test.com, and maybe even review the actual declaration and exhibits on PAIR.

Seems to me the clear danger in submitting a swear-behind that shows the "heart of the invention" rather than every limitation is that relying on In re Spiller also means you're admitting that the difference between what you showed and what you claim is obvious. So you get rid of one reference, but if the Examiner finds another teaching only the elements you relied on in your declaration, he has a good single-reference obviousness rejection, right? Because you've admitted the missing elements are obvious. Perhaps this is less dangerous in a reexam context, because maybe you can assume the reference asserted is the best one?