Mistake #7.5 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 finish my discussion of Mistake #7: Using attorney argument when evidence is required. My previous post in this series  – Mistake #7.0 – covered some of the scenarios where you may need evidence rather than attorney argument:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA

The remaining two scenarios, covered in today's post, are:

• Teachings of a reference
• Modifying or combining references

The first four BPAI decisions in today's post show that when you stray from the explicit teachings of the reference, the Board may find that attorney argument is not enough.

Ex parte Matsushita involved writing servo information to a disk drive. One of the claims required a control mechanism adapted to "enable writing ... during a subsequent revolution using the WORF data." The patentee argued that the prior art "is believed to only use WORF data obtained before servowriting for that track begins" and “in Schmidt, the WORF data used to write to a target track is apparently produced before any writing to the target track is enabled.” (Emphasis added.) The Board dismissed this as speculative argument rather than evidence:

Matsushita’s argument is not persuasive. Matsushita does not explain why it believes that Schmidt obtains WORF data only before servowriting to a track begins. Matsushita’s belief amounts simply to speculative argument by its counsel as to how Schmidt’s system may operate which is unsupported by objective evidence, such as expert testimony. Argument of counsel 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).

The Board then went on to explain how the reference did disclose the claimed limitation.
 
The Applicant in Ex parte Jacquot made an argument which the Board saw as being contradictory to the teachings of the reference. The reference disclosed "device emulation" while the claims recited "device simulation." The Applicant argued that the two were not functionally equivalent. But the Board noted that, to the contrary, the reference "apparently uses the two terms interchangeably and even explicitly describes that the computing device, e.g, S/390 can be simulated." The BPAI further explained that "the Applicant has not directed us to evidence to support its argument that emulation and simulation are not the same as far as Shmid is concerned." (Emphasis added.)

An Applicant statement about the teachings of reference which is merely conclusory may lead the Board to say that evidence is required. Ex parte Mayer involved clams to a chemical composition. The Applicant argued that "thermoplastic vinyl polymer B is dissolved in and reacted with polyisocyanate A to produce the composition of claim 1," whereas the "references disclose polymer/polyisocyanate dispersions." "One skilled in the art would readily appreciate that there is a difference between modified polyisocyanates and dispersions, particularly in view of the teachings in Appellants' specification." The Board found this statement to be "without evidentiary support" and stated that "attorney argument and conclusory statements, absent evidence, are entitled to little, if any, weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)."

The technology in Ex parte Intel Corp. related to a method of manufacturing a microsensor. The claim at issue included the step "forming said backside cavity while maintaining a portion of said substrate in said cavity to act as strengthening strips that extend completely across said backside cavity."  The Examiner asserted that the reference taught the "strengthening strip" element by disclosing a layer and a rim which operate to provide mechanical support for the sensor diaphragm. In The Applicant argued that the layer in the reference was a "tiny bit of material" which was "too thin" to perform any support or strengthening function. The Board found that this statement lacked evidentiary support:

We reject Intel's characterization. At the outset, Intel's bare assertion that a structure is too "tiny" if it is 5 microns thick to provide support or strength to a component is unpersuasive. The size or thickness of a structure cannot be taken in a vacuum, without explanation, in evaluating its feasibility as a strengthening strip. Intel also does not support its assertion with any objective evidence, such as declaration testimony. The assertion is simply argument of counsel. Such 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).

The remaining BPAI decisions in today's post show that attorney argument can be insufficient when explaining how references would, or would not, combine. Once again, it seems that straying from the explicit teachings can be viewed as mere speculation.

Ex parte Jarrell involved a collapsible wall hanger, and the Applicant appealed an obvious rejection using a combination of two references. The Applicant attacked the rationale for combining, arguing that "since Bierman’s scaffold has fixed brackets to render the scaffold rigid, it would not have been obvious to modify these fixed brackets to pivotal members in view of Thomas." But the Board dismissed this argument since "Appellant has provided no evidence that replacing Bierman’s welds with pivotal connections would render Bierman’s structure insufficiently rigid." (citing In re Pearson).

The application in Ex parte Doery related to a mail stacker. The Applicant appealed an obviousness rejection and argued that the combination would render one of the reference inoperative. Specifically, the Applicant argued that "if the insert of Caporali were incorporated along the platform of Beauchamp a Z-shaped drop profile between mailpieces could not occur,” which meant that “sufficient time and separation would not be available to dry the printed ink.” The Board dismissed this argument because "Appellant has not provided any evidence to show that the insert block of Caporali is not capable of working with the device of Beauchamp" (citing In re Pearson). The Board then went on to explain why the combination was not inoperative.

My two cents: When explaining the teachings of a reference, the line between what is acceptable attorney argument, and what is not, can be hard to discern. The cases I've read suggest that you're most likely to get into trouble when you make bald assertions and don't tie them to teachings in the reference. If you have support in the reference for your assertions, point to it. If you don't, you should consider submitting a 1.132 affidavit from a person who is more qualified to interpret the reference, i.e., a person of ordinary skill in art.