Takeaway: In Ex parte Busch, the BPAI rejected arguments about an indefiniteness rejection as mere attorney argument and hearsay. The claim on appeal was directed to a film with a flame treated surface layer "wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable." The Board affirmed an indefiniteness rejection because the Specification did not "show any required time period for the ... layer to 'remain heat sealable'." The Appeal Brief argued that the required time was long enough to be used in a packaging application, but the Board rejected this as mere attorney argument. The Reply Brief included several pages of technical explanation, but the Board criticized this information as hearsay rather than evidence.
Ex parte Busch
Appeal 2009002956, Appl. No. 10/484597, Tech. Center 1700
Decided August 18, 2009
Claim 12 was at issue.
12. A coextruded, biaxially oriented polyolefin film for heatThe Examiner found that the claimed invention uses known flame treatment described in a European Patent. The specification also states that "it is necessary here that the heat-sealable surface can be flame-treated in order to increase the surface tension without impairing the heat sealability." The Examiner rejected claim 12 as indefinite because the specification did "not show any required time period for the flame treated maleic anhydride-modified polyolefin layer to 'remain' 'heat sealable'."
sealing, wherein the film comprises
at least one outer top layer,
wherein said top layer has been surface-treated by means of a flame on the surface of the said top layer and wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable.
In the Appeal Brief, the Applicant asserted that the element was not indefinite because the layer "must be heat-sealable at least long enough to be used in a packaging application" and "this would be known to a person of ordinary skill in the art."
In the Reply Brief, the Applicant submitted several pages of technical details "to more easily understand the differences between heat sealing and adhesion and why adhesion is affected by a dropping surface tension while the heat sealable is not."
The Board found that the Applicant's interpretation of "remains heat sealable" to be a period long enough to be used for packaging was nothing but attorney argument, rather than evidence by a person of ordinary skill in the art.
To establish the meaning of "remains heat-sealable" to one skilled in the art, Busch-through counsel-"testifies" that one skilled in the art would know that the surface must be heat-sealable at least long enough to be used in packaging applications. Appeal Brief, page 8. For a long time, PTO practice-based on binding precedent-has been that counsel's "testimony" is not evidence. See, e.g., In re Walters, 168 F.2d 79, 80 (CCPA 1948); Estee Lauder, Znc. v. L'Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997).
The Board then analyzed the technical information offered in the Reply Brief. The Applicant described this as information provided by the "applicant" to the "undersigned." The Board found the presentation of this information to be riddled with problems.
In the non-entered Reply Brief, Busch attempts to tell us that "applicant" has informed the "undersigned" of certain technical facts, all of which are then set out in excruciating detail in the Reply Brief. Busch should not be surprised that the Board will not give any weight to this "testimony." First, we have no idea what counsel means by "applicant." Is applicant one of the inventors? Is applicant an employee of the assignee? Second, we assume "the undersigned" is counsel for Busch. Third, what the "applicant" purportedly told counsel is hearsay to the extent Busch relies on applicant's statements to establish the truth of those statements. Fourth, the "testimony" was belatedly presented in a Reply Brief thereby depriving the Board of the benefit of the Examiner's view of the accuracy or relevance of the "testimony." We decline to give any weight to the belated "testimony" presented in the Reply Brief.
The Board then affirmed the indefiniteness rejection, noting that "[w]e, like the Examiner, have no idea on this record what "remains heat-sealable" means in the context of this invention."
My two cents: This case teaches an important lesson: don't go to appeal with only argument when what you really need is evidence. You might not realize this unless you are familiar with the case law. In my experience, not many Examiners notify the Applicant that evidence is required. The Board, on the other hand, routinely tells Applicants that attorney argument on a specific point will be ignored because evidence is required. However, you've wasted the time and cost of an appeal if you wait for the Board to tell you.