BPAI finds swear-behind declaration insufficient for using different terminology than in the claims

Takeaway: In Ex parte Disney, the Board found that a swear-behind declaration did not show conception of a claimed spatial relationship because the claims used different terminology than the evidence. Specifically, the claims referred to the dimension as "vertical depth" and the inventor's notebook and invention disclosure form referred to the dimension as "long." Therefore, when differences in terminology exist between the evidence and the claims, you should also show that the terms are equivalent.

Details:
Ex parte Disney
Appeal 2008005465, Appl. No. 10/929,590, Tech. Center 3600
Decided: February 25, 2010

The technology in this application related to the structure of a transistor. The element at issue was:

first and second field plates disposed in the dielectric material of the first and second trenches, respectively, the first and second field plates having a first vertical depth ...
first and second gate members disposed in the dielectric material between the first and second sidewalls of the mesa, and the first and second field plates, respectively, the first and second gate members having a first vertical depth that is less than 20% of the first vertical depth.

Applicant submitted a declaration under § 1.131 to antedate the § 102 reference. The declaration attempted to establish conception before the effective filing date of the reference, coupled with diligence up to the time of filing of the application. The Applicant relied on a declaration from the attorney who prepared the application to establish diligence. The evidence submitted along with the inventor's declaration to establish conception included seven pages of notes and sketches from an inventor's notebook, a corporate invention disclosure form, and results from a computer simulation.

In the final Office Action, the Examiner alleged that the evidence did not show conception of the claimed depth relationship ("first and second field plates having a first vertical depth that is less than 20% of the first vertical depth"). Specifically, the Examiner alleged that:

"No teaching has been found in the Exhibits predating November 16, 2000, of said range. To the extent the Figures are of true scale, – and there is no statement on that either, the range appears not to be met by the figure illustrating the final structure, i.e., Figure 5K, in which the second vertical depth appears to be 25% instead of less than 20%."

The Appeal Brief argued against the Examiner's position by pointing to specific pages and figures in the three evidence documents and explaining how the claimed 20% range was described in these pages. After explaining the relevant portions of the evidence, the Appeal Brief concluded this argument as follows:

The evidence contained in the Declaration under 37 CFR 1.131 therefore clearly establishes the dimensional relationship recited in the relevant claims; namely, the vertical depth (i.e., length) of the gate members (3 pm) is less than 20% of the vertical depth of the field plate members (47 pm = Ld - TBox). Applicant respectfully submits that the range recited in claims 43-44 is fully supported in the Exhibits. Consequently, Baliga '372 should be removed from consideration as a prior art reference.

The Board did not discuss the showing of diligence, and instead moved directly to a discussion of whether the inventor declaration established conception of the claimed relationship between structures, namely, "first and second field plates having a first vertical depth that is less than 20% of the first vertical depth."

The Board found that the declaration was not sufficient. Where the Examiner took issue with the numeric ratio (less than 25% rather than less than 20%), the Board took issue with the terminology used to describe the dimensions. Specifically, the evidence referred to a vertical trench that was 3 um long, where the claim referred to the depth of the plates in the trench. The Board explained that:

The Rule 131 declaration submitted by Appellant to antedate the November filing date of the Baliga ‘372 reference clearly shows a gate poly and a field plate poly, but does not show a depth of the gate members that is less than 20% of another vertical depth (FF4, referring to the figure below showing a gate poly and a field plate poly, and the explanation “Added Vertical (trench) Gate 3μm Long; with Pbody 2.5 μm long, N+ Source 0.2 μm long”).

A measurement that is “long” is not an indication of depth (FF 4). Accordingly, we find that Appellant’s declaration does not prove that he invented the claimed vertical depths prior to the date of the reference to Baliga ‘372.

My two cents: When was the last time you wrote claims and didn't change the terms used by the inventor? That's a large part of what we patent attorneys/agents get paid for ... picking the right words. So I gotta believe this mismatch in terminology will be a common occurrence when you submit inventor-provided evidence with a swear-behind declaration.

The lesson here is not to ignore the discrepancy. Instead, you should explain it. It seems to me that dimensions in particular are easy to explain: depending on what your perspective is, length could also be considered width or depth.

From what I've seen, your best chance is to include the explanation of the discrepancy in the inventor declaration. You can try putting it in as a argument, and you might convince the Examiner that way. But if you go that route on appeal, you risk the Board ignoring your arguments because "[a]rgument of counsel cannot take the place of evidence lacking in the record" (Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)).

I also find it significant that the Board did not question the sufficiency of the showing of diligence. I've seen plenty of Board decisions that didn't reach the merits of whether the evidence showed conception / reduction because diligence was lacking. Therefore, I infer that there was nothing obviously wrong with the diligence showing. Furthermore, neither the Examiner nor the Board questioned the sufficiency of the evidence in showing any of the other claim limitations –  only the 20% limitation seemed to be an issue.

It's true that the Board found that this evidence had a hole in it, and you should take note of this. Nonetheless, I think this swear-behind was still a pretty good showing overall. Consider adding this application to your list of example swear-behind declarations – it's available in PAIR.