Can a draft application serve as evidence of conception in a swear-behind declaration?

In prosecution, a reference that is dated a few days or weeks before your application's filing date may provide an opportunity to swear behind the reference. But if you follow the conventional approach of using an invention disclosure document as evidence of conception, that may involve showing diligence for a long period up to filing of the application. What if you could use a draft of your patent application as evidence of conception? Now the diligence period would probably be much shorter. [If you need a refresher on swear-behind declarations, conception, and diligence, see my posts here, here, and here.]

I think using a draft application as evidence of conception is a viable strategy, given the right facts. I ran across a file history and corresponding BPAI opinion where the Applicant tried something like this, but blew it by not submitting the right documents as evidence of conception until it was too late. In a future post, I'll explain what went wrong in that case, and some lessons to be learned. This post will explain when and how to use a draft patent application as evidence of conception. I can't promise you this strategy will work -- I haven't run across any another file histories where this came up. So read through my explanation and decide for yourself.

A draft application is great evidence of conception in that – unlike an invention disclosure or technical paper – it's specifically written to describe and enable the claims. However, unlike an invention disclosure or technical paper, it's not written by the inventor. So on its face, an unfiled application may not appear to show conception by the inventor. This is the first obstacle to be addressed in using a draft application as evidence of conception.

I think inventor approval can provide this missing link. If the inventor approved the application for filing before the effective reference date, then I think we have conception by the inventor before the critical date. Along the same lines, an executed declaration of inventorship can provide the missing link. An inventorship declaration that is executed by at least one inventor before the effective reference date shows conception by the inventor.

If you don't have inventor approval/execution before the effective reference date, is the game over? Maybe not. If you can show that the application actually filed has no significant differences as compared to a draft application in existence before the critical date, doesn't that also provide the missing link? Doesn't that also show that the draft application reflects the inventor's conception? After all, the inventor later signed an inventorship declaration attesting that a very similar document described his invention.

So I think that under any of these fact scenarios, you have evidence of conception before the critical date. Of course, you still need evidence of diligence in filing, even if it's only for a few days or weeks. But that's going to be easier to deal with than the typical diligence period, because that starts much earlier when an invention disclosure is filed with the employer. 

As with any swear-behind declaration, a swear-behind relying on a draft patent application as evidence of conception should explain the correspondence between sections of the relied-upon document (in this situation, the draft patent application) and the elements of the pending claims. (See my previous posts mentioned above for more information.) The swear-behind declaration should also include an affirmative statement by the inventors that the draft application describes the claims. You should submit the draft application, as supporting evidence, along with the swear-behind declaration. You should also submit evidence that the draft was in existence as of the effective reference date.

Finally, you must comply with all the formalities of a swear-behind (e.g., signed by all inventors) and follow the rules to get the evidence entered (e.g., on non-final, with an RCE, or with a "good and sufficient" showing after final).

What do you think? Creative thinking? Or am I way off base?

Federal Circuit blog with prosecution focus

A new blog has come to my attention: the Ryan Alley Intellectual Property Law Blog. The focus of the blog so far is Federal Circuit decisions, but with a twist: the posts are written from a patent prosecutor's point of view. For example, Ryan's post on last week's Ultramercial v Hulu decision was subtitled "Claim Drafting Lessons," and the post on CBT Flint v. Return Path (indefiniteness) was subtitled "Prosecution Errors."

I particular like Ryan's blog because each post includes a Lesson section and a Commentary section. I welcome Ryan to the blogosphere and look forward to future posts.

BPAI reminds Applicant that formalities of swear-behind declaration are important

Takeaway: In evaluating a declaration under § 1.131 (swear-behind), the BPAI noted that the declaration did not comply with the required formalities. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors. The Board went on to find that the declaration lacked sufficient evidence of both conception and diligence, and then affirmed the prior art rejection since the Applicant made no substantive arguments against obviousness.

Details:
Ex parte Bianchi
Appeal 200702938; Appl. No. 10/327,489; Tech. Center 3600
Decided  January 28, 2008

The Examiner rejected as obvious over a combination of references. In response, the Applicant swore behind the secondary reference by filing a declaration under § 1.131. The Examiner did not withdraw the rejection, and the Applicant appealed. In the Appeal Brief, the Applicant made no substantive arguments but instead argued that the rejection was deficient because the swear-behind declaration removed the secondary reference as prior art.

The Board affirmed the rejections, finding that the Applicant had not submitted sufficient evidence of conception and/or diligence. The Board also noted that the declaration did not comply with formalities required by § 1.131. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors.

 ...

 

The Board indicated that

If the Appellants pursue the removal of Goodman as prior art by submitting an affidavit or declaration that fully complies with the requirements of 37 C.F.R. § 1.131, they should observe that the existing declaration ambiguously states that only one of the inventors is making the declaration in the text, while all inventors are signatories (FF 03 & 04). All of the inventors of the subject matter claimed must make the declaration. The Appellants should resolve this ambiguity by stating which of the inventors are actually making the declaration in any subsequent affidavit or declaration.

My two cents: Like the declaration of inventorship filed with an application, a § 1.131 declaration must be signed by all the inventors (with a few specific exceptions). But where the declaration of inventorship usually takes the form of a single document that names all inventors and is signed by all inventors, all the § 1.131 declarations I see use a different format. Specifically, a § 1.131 declaration is typically submitted as multiple documents, each signed by one inventor. All the documents include the same facts being attested to, and the same "information and belief" language. They differ only in the identification of the declarant/signatory.

As far as I know, you could submit a single document for a § 1.131, like a declaration of inventorship, as long as each declarant was named separately. The problem here was that one declarant was named as making the statements yet all inventors signed.

In an upcoming post, I'll discuss the sufficiency of the evidence and the timing of the declaration.

Applicant loses drawing objection petition because new matter introduced by showing relative locations of claimed elements

Takeaway: In an application directed to a "compressed tank system" for use in a vehicle fuel cell, the Examiner objected to the drawings for not illustrating the vehicle or the fuel cell. The Examiner then found the Applicant's drawing amendments unacceptable because they introduced new matter. The Petitions Office ruled that the objection was correct because the new drawings showed the location of the tank system in relation to the fuel cell and vehicle, where the originally filed application was silent on these locations. Despite an outstanding drawing objection, the Examiner passed the application to issue when the BPAI reversed all rejections.


Details:
Application 10/967,889 to Sachs (available in Public PAIR)

The Applicant filed an application titled "Heatable Hydrogen Pressure Regulator". The claims were directed to a "compressed tank system." The application included two figures, each illustrating an embodiment of a "compressed hydrogen tank system."


Several of the claims referred to a fuel system on a vehicle. For example, dependent claim 7 read "[t]he tank system according to claim 6 wherein the tank system is associated with a fuel cell system on a vehicle." Also, the preamble of independent claim 16 read "[a] compressed tank system for a fuel cell system on a vehicle, said tank system comprising ... "

In the first substantive Office Action, the Examiner entered a drawing objection under § 1.83(a) (every feature must be shown in the claims). The objection stated that "fuel cell" and "vehicle" must be shown in the drawings or cancelled from the claims. The Office Action also included prior art rejections under § 102 and § 103.

In the first Response, the Applicant submitted an amended Figure 1.

The Applicant also amended the specification so that the text describing Figure 1 referred to newly added vehicle 26 and fuel system 28. The Applicant addressed the prior art rejections by making claim amendments.

In the next (final) Office Action, the Examiner maintained the drawing objection and also indicated that the drawing amendments were "not accepted because they introduce new matter." Specifically, the "drawing contains subject matter which was not described in the specification, such as the location of the fuel cell system and the location of the compressed tank system." The prior art rejections were maintained, and the Office Action also included a 112 First written description rejection for one of the claim limitations added by amendment.

The Applicant responded by simultaneously filing a Notice of Appeal and a Petition to the Technology Center Director. The Petition requested that the drawing objection be withdrawn. In the Petition, the Applicant argued that the claims didn't specify a location for the fuel cell system or the tank system, nor was the amended drawing directed to these locations. Specifically, the Applicant argued:

It appears to be the Examiner's position that adding the fuel cell system 26 and the vehicle 28 to figure 1 is new matter because the original disclosure didn't identify "the location of the fuel cell system and the location of the compressed tank system." Originally filed dependent claims 7 and 15 only claimed that the tank system was associated with a fuel cell system on a vehicle. Paragraph 0014 of the specification was amended to state that the fuel cell system 26 is on the vehicle 28. Nothing in the original claims identified the location of the fuel cell system and the tank system, and, accordingly, nothing in the amended specification and proposed drawing changes is directed to the location of the fuel cell system and the compressed tank system. Therefore, Applicant respectfully submits that the Examiner's non-acceptance of the replacement drawings is improper and unreasonable.

While the application was still on appeal to the BPAI, the Technology Center Director issued a Petition Decision, ruling that the drawing objection was proper. The Decision explained that "there is no support in the original disclosure which shows the relative location of the fuel cell and the compressed tank system in the vehicle" yet "proposed figure 1 now clearly shows where the fuel cell system and the compressed tank system is located in relation with each other in the vehicle." Therefore, the new drawings did introduce new matter, and the objection to the drawings for introducing new matter was proper.

Four years later, the BPAI issued a decision reversing all the rejections (§ 112 First, § 102, and § 103). The Examiner then issued a Notice of Allowance which allowed all pending claims. No mention was made of the drawings or the outstanding drawing objection. The Applicant paid the Issue Fee, and the patent issued.

My two cents: One lesson here is that if you claim an overall system as well as an apparatus, it's wise to have a drawing that illustrates the overall system, even if that's not the focus of your app.


The Petition Decision seemed to be bad news for the Applicant, but turned out to be irrelevant because the Examiner allowed the application anyway after the Board reversed. I've run across a few cases having outstanding objections going into appeal, and this behavior – the objection simply disappears – seems to be fairly common. However, my blog post on the Frye application ("Applicant caught between inconsistent BPAI Decision and Petition Decision") shows that you can't always count on that.

As to the merits of the Petition Decision, I disagree that the amended drawings "clearly show" where the claimed systems are located "in relation with each other in the vehicle." The drawings look to me like schematics or block diagrams that don't convey a particular location. Perhaps the Applicant would have been better off with an amended drawing that looked even more like a black box – maybe showing the vehicle as a rectangle rather than the stylized vehicle.

BPAI gives no patentable weight to a "mental step" limitation

Takeaway: The Board gave no patentable weight to the limitation "at least one set of text that was authored not for any purpose related to creating or accessing the profile" because an objective reader of the claim could not determine the author's purpose. The Board found that the limitation amounted to a mental step and was therefore not to be given patentable weight. (Ex parte Gilmour, BPAI 2011.)

Details:

Ex parte Gilmour
Appeal 2009-003143; Appl. No. 10/135,2541; Tech. Center 2100
Decided  August 8, 2011
The technology on appeal related to profiling electronic documents. A representative claim on appeal read:

178. A machine-implemented method comprising:
   automatically constructing a profile of a first entity based on a plurality of sets of text, the plurality of sets of text including at least one set of text that was authored not for any purpose related to creating or accessing the profile;
   storing the profile in a machine-accessible storage facility;
   in response to an action of a second entity, identifying the first entity as meeting one or more criteria, based on the profile of the first entity; and
   outputting an indication to the second entity that the first entity meets the one or more criteria.
(Emphasis added.)

The Examiner rejected the above independent claim as being obvious over a combination of two references, Robertson and Barrett.

On appeal, the Applicant argued that the combination did not teach the limitation emphasized above. The Applicant argued that Barrett disclosed prompts which were authored specifically for the purpose of creating a viewer profile, "which is directly contrary to the claim limitation in question." The Applicant then noted that the final Office Action did not explain how Barrett taught the limitation, but instead only made the naked assertion that:

Barrett teaches monitoring a user's viewing preferences to create a profile. Preferences, which are viewed by a user, are included in a profile. Preferences, which are not viewed by a user, are not included in a profile, are not purposed [sic] for creating a profile (abstract, col. 2, lines 17-67).

In the Answer, the Examiner first noted that the Applicant's specification did not "support" the limitation at issue, and "thus, Examiner is entitled to give claim limitation its broadest reasonable interpretation in light of the specification."

The Examiner's Answer then explained how Barrett taught the limitation at issue, as follows:

The above information shows that only a single set of programs is selected and the other sets of programs from the programs in the viewer profile template are not selected to create the profile. In this case, the other set is program names, which are not selected, are authored not for any purpose related to creating or accessing the profile. The other set program names are represented as at least one set of text that authored not for any purpose related to creating or accessing the profile.

In a Reply Brief, the Applicant first responded to the Examiner's comment that the limitation at issue was not "supported' by the specification. The Reply Brief also rebutted the Examiner's explanation of Barrett

Finally, the Applicant argued that the Examiner had improperly dissected the claim limitation:

     Furthermore, to properly evaluate the invention as a whole, when applying the prior art, it is improper to dissect a single claim limitation into parts and then find disclosure of each part of the limitation in different references (or different places in the same reference), as the Examiner has done. Hence, with regard to claims 178 and 202, one cannot separate the concept of "a set of text [used to create a profile]" from the concept of "authored not for any purpose related to creating or accessing the profile". These concepts are inextricably linked to form a single limitation in claims 178 and 202, which cannot be dissected (i.e., a set of text that
is used to create a profile of an entity and authored not for any purpose related to creating or accessing the profile). To dissect this limitation into component parts when applying prior art vitiates its meaning.
     Accordingly, the Examiner cannot simply use some disclosure in Barrett of the general notion of "not for any purpose related to creating or accessing a profile," where that notion is unrelated in Barrett to any set of text that is used to create a profile, and then rely upon Robertson's general disclosure of "sets of text" to provide the rest of the claim limitation. To find the present invention prima facie obvious, the Examiner must first find some disclosure of a set of text that is used to create a profile of an entity but which is authored not for any
purpose related to creating or accessing the profile.

The Board affirmed the obviousness rejection by finding that the limitation at issue was not to be given patentable weight.  First, the Board noted that the limitation appeared to be intended use, as it "added no structure to the claim nor functionally changes the 'at least one set of text' that it modifies."

Furthermore, according to the Board, "authored not for any purpose related to creating or accessing a profile" was a mental step and as such, it was not entitled to patentable weight. Although the mental steps doctrine is typically used to analyze for compliance with 101, the Board found it also appropriate in assessing patentable weight.  

We find that this purpose is an undecipherable thought, fully within the mind of the author as he or she composed the text. We strongly question whether one can discern the true purpose of any text, such as an e-mail: was an author’s purpose to inform or misinform the sender or recipient; was the purpose the author’s self aggrandizement or humble flattery of the sender or recipient; was the purpose to acknowledge some debt or to seek relief from it or, as recited in this claim, to be part of a profile. No objective reader of a set of text knows for sure what the author’s purpose in authoring the text was, let alone knowing specifically whether its purpose was related to creating or accessing a profile. The purported limitation expresses a mere idea, a mental step taken by an author and unknown by any but that author, if indeed he can discern his real purpose in authoring the set of text.

Because this was the only limitation argued by the Applicant, and because the Board also found the references to be properly combinable, the Board affirmed the obviousness rejection.

One ALJ dissented from the majority's position. According to the dissent:

[T]he language of claim 178 does not require that someone discern the true purpose of the text. Instead, I find that the negative limitation contained therein is directed towards discriminating whether the text is related to creating/accessing a profile or not. 

Applying the broadest reasonable interpretation in light of the specification, the dissent found that the limitation encompassed "intercepting text, such as e-mails, that is generally not inputted into a profile template."

While Appellants’ choice of terminology, e.g., “authored” and “purpose”, could possibly draw one to conclude that an intended use may be at the horizon when read in isolation, I find that when the claim is read in its entirety and read in light of the specification, it becomes apparent that Appellant is merely attempting to discriminate one type of data from another and not trying to create some mind-reading phenomenon.

The dissent also found that the limitation did affect the claimed functionality, and was therefore not intended use:

When looking at devices, it is understood that the structure of a data file does not change with the type of data placed therein. However, I am not convinced that the same analysis applies to the method steps of the present invention. ... The step of including a set of text with a particular characteristic affects the functionality depending on the type of text intercepted. Accordingly, I disagree with the Majority that the claimed “at least one set of text” should not be given any patentable weight.

My two cents: The Board's use of the mental steps doctrine to determine patentable weight seems out of left field. I don't get it. If an "objective reader" could not figure out the meaning of the limitation at issue, an indefiniteness rejection would have been more appropriate.

Nor do I see how you come up with intended use, because the use was actually claimed.

Then, with its talk about the limitation not providing any "functional changes" to the claimed text, the Board sounded like it was trying to invoke the Non-Functional Descriptive Material doctrine. But, as the dissent noted, NFDM is not applicable here, since the claimed data does affect the functionality. Namely, it affects the claimed construction of a profile.

Seems to me that the Board just didn't like this claim, but didn't know how to reject it, so it tried a shotgun approach: intended use, quasi-Non-Functional-Descriptive-Material, mental steps ...

I feel strongly that the claim was badly written from an enforcement point of view. I don't want to put intent in my claim because that gives the accused infringer plenty to argue about. Plus, what sort of proof do you use to show the author's "purpose" in creating a text?

Let's assume the limitation has patentable weight, and look at the Examiner's position. Best I can tell, the Examiner's logic is as follows:

• Viewer is presented with information about multiple television programs
• Viewer's choices determine which programs are included in a viewer profile
• Those programs which are included read on "authored for a purpose related to creating or accessing the profile"
• Those programs which are not included read on "authored NOT for any purpose related to creating or accessing the profile." 

Is the Examiner's position devious, or way off-base?

Any program not used in creating the profile is ... by definition ... "NOT for any purpose related to creating the profile". On the other hand, that doesn't take into account the claim term "authored." How does the term "authored" fit with the reference's TV programs?

The Applicant characterized the claim language as "a set of text used to create a profile" where the set includes a text NOT authored for any purpose ... " If the claim really said that, I think the Examiner is wrong. Because the unselected programs the Examiner is relying on to meet the "not authored" limitation are not included in (are not "used to create") the profile.

But the claim doesn't say that. Instead, the claim says "automatically constructing a profile of a first entity BASED ON a plurality of sets of text". And the reference does base its profile construction on the entire group of programs: those that make the cut and are selected for inclusion in the profile; and those that are not selected for inclusion in the profile. So isn't the profile constructed BASED ON the entire set of programs?

In total, I think the Examiner's position isn't off base in quite the way the Applicant argued, but does have some holes in it.

BPAI finds it proper to use corresponding US application as translation of foreign patent application

Takeaway: The Examiner rejected claims under § 102(b) as being anticipated by a WIPO publication in French, as evidenced by a US patent publication by the same inventor. On appeal, the Applicant argued that the rejection was improper because the Examiner did not provide a translation of the WIPO publication nor show that the US patent publication was the same as the WIPO publication. In the Answer, the Examiner explained that the US patent publication was the national stage entry of the WIPO international publication. The Board found the rejection was proper because the Examiner had shown that both publications corresponded to the same document, and the Applicant did not refute this finding. The Board then affirmed the anticipation rejection on the merits.

Details:
Ex parte Kornfalt
Appeal 2010008703; Appl. No. 10/581,261; Technology Center 1700
Decided  August 30, 2011

In a non-final Office Action, the Examiner rejected a set of claims under § 102(b) as anticipated by a French language publication, WO 03/060256 to Grau, "with evidence by Grau (U.S. 2005/0115181) and Bollinger [a 2003 publication of the periodical Hardwood Floors." The Examiner further indicated that "Grau '181 is interpreted as the English equivalent to [French] Grau '256."

In response, the Applicant distinguished the claims from Grau. However the Applicant also questioned the use of an anticipation rejection using multiple references, and the use of Grau '181 in particular. The Applicant cited to MPEP 2131.01, which explains three scenarios in which multiple references are proper. The Applicant argued that the Examiner "did not identify any of these purposes [in MPEP 2131.01] in the citation of the additional two documents." The Applicant also noted that English language Grau '181 is not prior art under § 102(b), since it was published after Applicant's priority date. As such, the Applicant concluded that "Grau '181 cannot be used as 'evidence' for the teaching of [French language] Grau '256."

In the subsequent final Office Action, the Examiner maintained the anticipation rejection and explained why the Applicant's arguments were not persuasive. The Examiner did remove Bollinger from the rejection, but maintained "Grau (WO 03/060256) evidence by Grau (US 2005/0115181)." The Examiner explained that "Grau '181 is not cited as prior art but rather as the English translation of Grau '256." The Examiner noted that the burden had shifted to the Applicant: "If Applicant believes that the translation of Grau '256 is not accurate as relied on the Applicant is requested to point out any such material discrepancy."

The Applicant filed an After Final Response which corrected a typographical error in the claims. The Applicant continued to argue that the anticipation rejection was not proper because Grau '256 "is not prior art under any applicable section of USC 102." The Applicant argued that the Examiner had improperly shifted the buden:

If the examiner contends that the Grau WO reference, though in a foreign language supports his rejection, the burden is upon the examiner to obtain a translation of Grau WO and he cannot shift this burden to applicants to obtain their own translation when it is clear that Grau WO does not support the examiner's contentions as will be discussed in detail below.

The Examiner issued an Advisory Action entering the claim amendment and including a copy of the Grau '256 WO publication. The Examiner stated that "Grau '256 appears to be equivalent to Grau '181." The Advisory Action also included an explanation of how the Examiner was interpreting the claims.

The Applicant filed a Notice of Appeal. In the Appeal Brief, the Applicant made substantive arguments distinguishing the claims over Grau. But the Applicant also continued to challenge the use of the 'Grau 256 WO publication:

Initially, the Examiner states that Grau '181 is the English equivalent to Grau '256. The Examiner provides no reasoning for making a statement nor to applicant's knowledge is there evidence that Grau '256 contains the teachings relied upon by the Exanliner with reference to Grau "181. It is of course a basic concept of Patent law that the party asserting a reference as prior art has the duty to establish that it is, in fact, prior art ... [A]s Examiner has never provided applicant with an English language translation of Grau '256, Applicants submit that the Examiner has not established that Grau '256 is anticipatory of the claimed invention.

In the Answer, the Examiner backed up his assertion that Grau '181 was the English equivalent of the relied-on Grau '256 WO publication, by showing a family relationship between the two:

Grau (US 200510115181) is the national stage entry of PCTlFR03100025 filed 1/7/2003. The international application number for Grau (WO 031060256) is the same PCTlFR03100025 with filing date of 1/7/2003. Grau (WO 031060256) was published on 7/24/2003 which is before the Swedish filing date of 1211 112003 of Applicant's application.

The Board found that the Examiner had properly relied on Grau ‘181 as the English translation of Grau ‘256, since the Examiner did make the requisite factual findings:

As is apparent from pages 19 and 20 of the Answer, the Examiner has supplied a factual proof for finding that both Grau ‘256 and ‘181 correspond to the same document, PCT/FR03/00025 filed on January 7, 2003. Appellants have not disputed the accuracy of this proof. Nor have Appellants shown any inconsistencies between the disclosures of Grau ‘181 and Grau ‘256.

The Board then went on to affirm the anticipation rejection on the merits.


My two cents: I wouldn't file an appeal on this point alone, but the Applicant did have substantive arguments too. As long as you're fighting on substance, I don't see anything wrong with also arguing about "technicalities." Here. that means forcing the Examiner to thoroughly explain his use of the English language, non-prior art Grau as "evidence" of the teachings of the French language, prior-art Grau.

The most interesting thing about this case is how many rounds it took for the Examiner to explain the family relationship between the two Grau references. If the Examiner had explained that before appeal, the Applicant might have stopped insisting on a translation.

Not sure why the Applicant didn't dig up the family relationship himself, since there's enough information on the WIPO website to figure it out. So if you encounter a similar situation with a non-prior art patent publication being used as "evidence" as a prior art patent publication, you might want to see if there is an easily discoverable relationship between the two.