Mistake #7.0 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll discuss Mistake #7: Using attorney argument when evidence is required. Actually, I'll take two posts to cover this topic, so consider this to be a post on Mistake 7.0. (Update: The second half of this post can be found here: Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required.)

The MPEP discusses the use of declaration evidence to refute a prima facie case of obviousness. Therefore, some practitioners have the mistaken impression that this is the only time evidence is required. Not so. Other types of arguments that may require evidence instead of attorney argument include:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA
• Teachings of a reference
• Modifying or combining references

I'll talk about the first four of these in today's post. I'll save teachings of a reference and modifying  / combining references for the next post in the series. A general guideline for all situations is that the Board may require evidence when your argument relies on more than the plain teachings of the reference.

Applicants often respond to enablement or written description rejections by pointing to portions of the specification and arguing that the claims are enabled in view of these teachings. If these teachings are self-explanatory, then attorney argument is probably sufficient. However, if one needs to go beyond the explicit teachings of the specification to see that the claim is enabled, evidence may be required.

This point is illustrated in Ex parte Roche (BPAI, 2009). 

The Examiner has presented a facial case that determining a threshold value for a particular fuel rod is not predictable. The Examiner has further presented a logical basis to conclude that one of ordinary skill in the art would be required to conduct undue experimentation to determine the threshold value. In opposing the Examiner’s reasoning, Compagnie chose not to rely upon evidence in the appeal. Instead, Compagnie relies upon unsupported attorney argument that the specification provides examples of how the threshold might be determined and postulates a manner in which one of ordinary skill in the art could potentially determine a threshold value. We do not credit Compagnie’s attorney argument as it is not commensurate with the teachings of the specification. See, Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Similarly, when an Applicant takes the position that a reference is not enabling, evidence may be required, especially when the position contradicts the reference itself.

This issue arose in Ex parte Kim (BPAI, 2009). The application claimed a semiconductor manufacturing method which included the step "performing a non-selective etching from said substantially planar surface to a said predetermined structure formed thereon." The Applicant argued that the reference did not explain how to make the etching process non-selective as claimed, i.e., that the disclosure in the reference was not enabling. The Applicant noted that the reference did not include any details for non-selectivity, while the Applicant's own non-selective etching was described in detail.

The Board disagreed:

   IBM has offered no credible argument nor evidence that the RIE of Hummler is “selective” as to certain materials shown in Fig. 9 versus “non-selective”. To the contrary, Fig. 10 illustrates that the nitride layer 42, as well as the insulating material 50, and the pad nitride 14, are all removed in the RIE to present a substantially uniform planar surface in Fig. 10A.
   IBM's remarks regarding the alleged non-enabling disclosure of Hummler are not well taken. Hummler is presumed to be enabling for all that it describes and IBM has proffered no evidence to the contrary. See, In re Sasse, 629 F.2d 675, 681 (CCPA 1980)

Attorney argument may not be appropriate in explaining the meaning of a claim term. Instead, a dictionary definition or other evidence of what the term means to a person in the art may be required.

This point is illustrated by Ex parte Pettinato. The Examiner read the claim term "stenocapturing device" as being "broad enough to include a voice recognition transcription device," while the Applicant asserted that "it is known to those skilled in the art of closed captioning that a stenocaptioning machine is operated by a human being." The Board agreed with the Examiner's interpretation, noting that "Appellant has not provided a definition from a recognized source in the art, but has only provided attorney argument."

Statements about the knowledge of a person of ordinary skill in the art can be another instance where evidence rather than attorney argument is required. Ex parte Cobb involved an indefiniteness rejection for the term "standard size magnetic stripe gift card." The Applicant asserted that "there is a standard size for magnetic strip gift cards, and that is the size of a credit card, namely 54 mm by 86 mm."

The Board affirmed the indefiniteness rejection, explaining that:

Appellant presents only argument and but no evidence indicating that a person of ordinary skill in the art would have known that there was at the time of invention a standard size for magnetic strip gift cards, or that that size is the same as credit cards. Appellant does not argue that the Specification offers any clarification as to what constitutes a “standard” size gift card.

As another example of assertions about the understandings of a POSITA, in Ex parte Rosenberg the Applicant argued that if the changing pad disclosed in one reference were modified to absorb urine per the teachings of another reference, "it would quickly become stinky and unusable."

The Board found this statement to be mere speculation unsupported by evidence:

The Appellant, however, does not explain the basis for the assertion that a pad with absorbed urine is “unusable.” The argument amounts simply to speculation by the Appellant that is unsupported by the prior art or any other objective evidence, such as declaration testimony. Mere argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

My two cents: In most of the file histories I've read, the Examiner never said "evidence is required." It was only in the decision on appeal that the Applicant learned his "mere attorney arguments" weren't entitled to consideration. All is not completely lost, since you can re-open the case after appeal in order to introduce evidence. But clearly it's better to know this the first time, to avoid a second trip to the BPAI.

Another good rule of thumb: if your inventor gives you information about how the technology works, or what a reference teaches, you should probably introduce this as declaration evidence rather than pasting this into your response.