Mistake #8 when arguing at the BPAI: Using a declaration that amounts to opinion without factual support

Today I'll return to my list of Top 10 Applicant Mistakes on Appeal. The last post in this series was Mistake #7: "Using attorney argument when evidence is required". (Split into two parts: Mistake 7.0 and Mistake 7.5.)

The most common form of evidence is an expert declaration under § 1.132. Today's post on Mistake #8 is also about declarations: "Using a declaration that amounts to opinion without factual support."

Ex parte Norman was an extreme example of a § 1.132 declaration with no factual support whatsoever. The declaration, which was submitted to overcome an obviousness rejection, merely stated:

I am a co-inventor of the above-identified Application. I am familiar with the Official Action dated September 24, 2003 and have thoroughly studied the prior art used to reject the claims in the Application. As a result of my long experience in the toy industry, I can unequivocally state that the prior art utilized to reject the claims in the Application does not render those claims obvious. Rejection of the claims is based on the use of hindsight, not actual teachings or suggestions gleaned from the prior art.

The Board found that "this conclusory assertion is of little or no value because Mr. Norman fails to set forth any facts underlying the opinion."

The Applicant in Ex parte Pruitt filed a § 1.132 declaration to overcome an obviousness rejection. The declaration discussed the teachings of the prior art, and even contained references to specific passages in the prior art:

16. In the BACKGROUND portion of the Elliott et a1 patent (Col. 1, lines 44-48), the inventors confirm that a single pair of rubber conditioning rolls with a herringbone rib pattern has problems feeding extremely thick or wet hay. When the rubber rolls get wet, they become slick and can't grip the hay as well. Therefore, the inventors in this patent state that one of the objects of their invention is "to provide a hay cutting machine which is less prone to plugging than others presently available" (Col. 1, lines 66-68). These inventors suggest solving this problem by providing a second pair of rubber rolls with a herringbone rib pattern and setting the tension lighter than in a "single-roller" conditioner to accomplish the same degree of conditioning (Col. 2, lines 1-4). This patent does not disclose the use of metal conditioning rolls of any kind.

However, the Board found the declarant's statement about rubber rolls to not be credible because it contradicted the plain teachings of the prior art, and because the declarant did not explain the discrepancy:

[W]e cannot ascertain the basis for Mr. Pruitt’s statement in paragraph 16 of the declaration that Elliott discloses the use of rubber rolls. We have reviewed the passages of Elliott cited by Mr. Pruitt and find no mention that the rolls are made from rubber. Mr. Pruitt does not provide any further explanation in his declaration for the basis for this assertion.

Ex parte Tydings was a reexamination appeal with claims directed to a urine drug screening system. The patentee submitted a § 1.132 declaration to overcome an obviousness rejection, but the Board found the statements were not supported by facts:

The declarants testify that the claimed assay assembly and the assembly claimed in the 620 patent function differently. Tydings, ¶¶ 13, p. 3; Hipple, ¶ 11, p. 3. Hipple also testifies that it would not have been appreciated that the up the wick flow would function and be operable. Hipple, ¶ 11, p. 3. The declarants, however, have not provided an explanation of how the claimed and 620 assemblies in fact function differently or why one skilled in the art would not have appreciated that arranging the contact point so the urine generally flows in an upward direction would not be operable. We do not give weight to the unsupported opinions on these points. Opinions unsupported by facts are entitled to little or no weight. In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985) (en banc).
(Emphasis added.)

Ex parte Early Childhood LLC was another reexamination appeal. The patentee filed a § 1.132 declaration to show the secondary consideration of commercial success. The declarant stated that “[t]he cot which is patented in the 6,345,400 patent . . . is a principal product of ELC . . . and comprises a significant portion of the $180,000,000 annual revenue and has been a huge commercial success.” The Board found the declaration insufficient because it did not "provide a detailed analysis of how the features of the cot enjoying these sales compares to features of the claimed cot." The Board further noted that "[m]erely stating that a product, even if it is the claimed product, is a 'significant portion' of annual revenue does not establish any of these factors [required to show commercial success]." The patentee offered as additional evidence an email "which states that cot covers with Velcro® enclosures have become 'standard' in Asia," but the Board found that this email did not address the commercial success factors either.