Tuesday, January 29, 2013

Board of Appeals discusses §1.132 derivation declaration and rejection under §102(f)

Takeaway: An Applicant attempted to disqualify, as prior art, a publication listing two of the four inventors as authors. In a §1.132 declaration, the four inventors stated that the publication was derived from the work of the two author inventors. The Examiner found the declaration insufficient to overcome the §102(a) rejection because it did not attest to derivation from all of the inventors. The Examiner then added a rejection under §102(f) ("did not invent"). The Applicant appealed, arguing that a derivation declaration was only required to attest to derivation from at least one inventor, and that the §102(f) rejection was in error since the Examiner had not identified an inventor not named on the application. The Board affirmed the §102(a) rejection, holding that the declaration must attest to derivation from the entire inventive entity in order to show the publication was not "by another." However, the Board reversed the §102(f) rejection, finding that the statement in the declaration which referred to "our invention" provided enough evidence of correct inventorship to overcome the rejection.

Details:

Ex parte Abe
Appeal 2010000029; Serial No. 10/128,474; Tech. Center 2400
Decided:  June 28, 2012

The Examiner rejected all claims under §102(a) by a publication ("XPath") authored by two of the four inventors and submitted in an IDS. The Applicant attempted to disqualify the Xpath publication as prior art by filing a derivation declaration under §1.132. The Examiner found the declaration insufficient, since MPEP §716.10 "requires that the relevant portions of the reference originated with or were obtained from applicant (i.e., inventive entity)" (emphasis added). However, the Applicant's declaration merely stated that the reference was derived from the work of only two out of the four inventor.

The Examiner also added a rejection under §102(f) ("did not invent"). The Examiner explained as follows:
Applicant has declared that only two of the four inventors have derived the relevant portions of the [Xpath reference]. Given the reference teaches all the claimed limitations, it is apparent that the inventive entity (Mari Abe, Scott D. Dewitt, Masahiro Hori, and Brad B. Topol) are not the sole inventors of the claimed invention.
In an Appeal Brief, the Applicant continued to argue that the §1.132 declaration had removed Xpath as prior art. The Appeal Brief also specifically addressed various dependent claims, arguing that the Xpath did not teach all the limitations of those claims. In explaining why Xpath had been removed as prior art, the Applicant asserted that a §1.132 declaration disqualified the reference as long as the reference was "derived from at least one Applicant," as opposed to the Examiner's requirement that the derivation be from the work of all inventors. The Applicant explained that the Examiner's reading led to the "anomalous result" that §1.132 declarations could be used when "all possible inventors (as described in the article) may not have been named as inventors" yet could not be used when "all possible inventors (as described in the article) have been named as inventors."

The Applicant turned to the §102(f) rejection. The Applicant first addressed the Examiner's statement implying the inventive entity must be incorrect by noting that inventorship was on record in the executed Declaration and Power of Attorney. According to the Applicant, the §102(f) rejection was in error because the Examiner had not identified any inventor not named on the declaration.

In the Answer, the Examiner handled the §102(a) rejection by simply stating that the declaration did not overcome the rejection. As to §102(f), the Examiner explained:
Example 2 of MPEP 716.10 requires that the relevant portions of the reference originated with or were obtained from applicant (i.e. inventive entity). Applicant has declared that the reference "A Visual Approach to Authoring XPath Expressions" is derived from the work of only two out of the four inventors. Therefore, it raises a question as to whether the inventive entity (i.e. Abe, Hori, Dewitt and Topol) are the sole inventors since the claimed subiect  matter was only derived from Abe and Hori. The Examiner requested it be made clear that Dewitt and Topol did not contribute to the claimed invention (e.g. they only contributed to a portion of the specification that was not claimed) in order to rule out the possibility that the inventive entity are not the sole inventors of the claimed subject matter.
The Applicant filed a Reply Brief noting that the Examiner's Answer amounted to a request to remove inventors, while inventorship is a question of fact and cannot be manipulated for the convenience of the Examiner. Moreover, the Applicant explained, inventorship is determined on a claim by claim basis:
Dewitt and Topol may be inventors of only some of the claims. Similarly, Abe and Hori may be inventors of only some of the claims. The fact that certain claims were not identically disclosed by the prior art article by Abe and Hori evidences that additional contribution was made to the claimed invention.
On appeal, the Board affirmed-in-part. The §102(a) rejection of the independent claims was affirmed, but the §102(f) rejection was reversed. The Board also reversed the §102(a) rejection of some of the dependent claims, finding that various features in dependent claims were not disclosed by the Xpath reference.

The Board clarified that attesting to derivation from a subset of the inventors was sufficient not remove the reference as "by another" under §102(a). "By another" means any difference in inventive entity, so the fact that only two inventors were listed as authors of the Xpath publication indicated that the publication was "by another." A §1.132 declaration attesting to derivation from all the inventors would thus disqualify the reference, by showing that the inventive entity is the same. However, derivation from only a subset of the inventors means the reference is still "by another" and is thus prior art. 

In reversing the §102(f) rejection, the Board explained that designation of the authors of a publication not raise a presumption of inventorship with respect to the subject matter disclosed in the article so as to justify a rejection under §102(f). (MPEP §715.01(c)). Such a rejection does require the Applicant to "provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct." (MPEP §715.01(c)). The Board found the Applicant did exactly that, by submitting a declaration signed by all inventor stating "the disclosure found in the [Xpath publication] is our own invention."

My two cents: Reading in between the lines, the Board's brief opinion suggests that the Applicant had simply misinterpreted the law on §1.132 derivation declarations. Yet the Applicant fought long and hard for its position, when it seems that the problem could be taken care of by rewording the declaration. Unless, factually, the Applicant simply couldn't make the statement that the two author inventors derived from the work of the other two (non-author) inventors? The Applicant's arguments suggested that inventorship may have varied from claim to claim. So maybe another approach would be to split the application into two, with different inventive entities? I gotta admit, I got a headache thinking about this one.

Was the Examiner off base in giving the §102(f) rejection? Essentially, the §102(f) rejection seemed to be the result of a discrepancy between Abe, Hori, Dewitt & Topol being named the inventive entity and a finding that a publication authored by Abe & Hori alone disclosed all claim limitations. 


9 comments:

  1. I don't understand the Board's decision.

    Regarding the 102(f) rejection, the Board concluded "we find that Appellants have provided a satisfactory showing that all four Appellants are the inventors of the subject matter disclosed in the article and claimed in the application." As a result, the Board reverses the 102(f) rejection.

    However, regarding the 102(a) rejection, the Board writes "[t]he inventive entity is different if not all inventors are the same" and "the declared authors of the cited prior art publication includes only a subset of the inventive entity of the application." The Board concludes "Abe is available as prior art, as Abe is by another." Thus, because the alleged "inventorship" was different (i.e., "by another"), the Board affirmed the 102(a) rejection.

    How can the Board reverse the 102(f) rejection (because the inventorship was the same) and affirm the 102(a) rejection (because the inventorship was different). What am I missing here?

    BTW … authorship ≠ inventorship. As far as I know, there is no such thing as inventorship of an article. Unlike inventorship, in which an application has to declare that they are the true inventorship, there is no such requirement regarding a published article.

    ReplyDelete
    Replies
    1. That's because the Board and the examiner were way off the rails on the 102(a) rejection. However, the Appellant didn't help itself.

      Regarding the "inventorship" of the article, the Appellant stated that the article was derived from the work of only two of the four inventors. That's a problem, since if the article truly anticipates all 20 claims, then there must be a problem with the inventorship allegation. The examiner is correct that this raises a question as to the proper inventive entity.

      I think the Board's analysis of the 102(a) rejection is off track, however. The reference is a printed publication. Under 102(a), the issue is not whether it is "by another," as those words aren't in 102(a). Further, the "others" in 102(a) doesn't apply to printed publications. The magic words in 102(a) are "before the invention thereof by the applicant." Thus, to overcome the 102(a) rejection, the appellant needs to either show that the reference doesn't actually anticipate the claims, or swear behind. Note that the Board discusses MPEP 2136.04 in its analysis of the 102(a) rejection, but that section is about 102(e).

      Unless the appellant is also arguing that the reference doesn't anticipate the claims, they should be swearing behind the reference to deal with the 102(a) rejection.

      Unless I'm missing something?

      Delete
    2. "the Appellant stated that the article was derived from the work of only two of the four inventors"
      The word "only" was inserted by the Examiner and the Board. I've looked at the declaration and that statement is not there. Here, the Board is rewriting the declaration to fit its conclusion.

      "Unless the appellant is also arguing that the reference doesn't anticipate the claims, they should be swearing behind the reference to deal with the 102(a) rejection"
      I presume the declaration was intended to show that the prior reference was not "by others," which would disqualify the reference. Also, have you tried swearing behind something the last 5 years or so? Unless the dates are really close, my experience has been that most Examiners will argue that the complete time (between reference date and filing date) has not been properly accounted for.

      Delete
    3. I presume the declaration was intended to show that the prior reference was not "by others," which would disqualify the reference.

      No, it wouldn't. In 102(a), the phrase "by others" doesn't modify "printed publication." For what it's worth, once an article is published, its contents are probably known "to others", wouldn't you think?

      Thus, the 102(a) issue comes down to whether the invention was made before the publication. Yes, it seems logically inconsistent to say that two of the inventors published an article anticipating the invention before the invention was made (but see my comments below about reduction to practice). Nevertheless, the existence of the article triggers a burden on the applicant to show that the invention occurred before the publication. If they can't do that, then they have a problem.

      Yes, I'm familiar with the difficulties attending 131 declarations. I think that's a different problem, however, stemming from the diligence requirement in 37 CFR 1.131 (2). (I'm not certain of what the statutory basis is for this part of the regulation, at least as pertains to 102(a) - perhaps the idea is that lack of diligence triggers 102(c), or it could be that the "invention" as referred to in 102(a) is not complete until actual or constructive reduction to practice.) Note that part of the problem comes from the potential difference between the applicant's "reduction to practice" (after which diligence is not required) and the applicant's enabling and anticipating reference. It seems quite reasonable to say that you can produce an enabling publication before you've actually reduced the invention to practice. Obviously the applicants here did so before constructively reducing it to practice.

      Delete
    4. "For what it's worth, once an article is published, its contents are probably known 'to others', wouldn't you think?"
      However, 102(a) requires that the knowledge occurs "before the invention thereof by the applicant for patent." Assuming that the declaration establishes that the article is their own invention, the article wouldn't be BEFORE the invention thereof. Instead, the article would be simultaneous with (i.e., not before) the invention.

      "Nevertheless, the existence of the article triggers a burden on the applicant to show that the invention occurred before the publication."
      Again, the requirement is that the publication be before the invention. Thus, you don't need to establish that the invention pre-dated the article ... only that the invention and article are one and the same.

      "It seems quite reasonable to say that you can produce an enabling publication before you've actually reduced the invention to practice. Obviously the applicants here did so before constructively reducing it to practice"
      Is the article a constructive reduction to practice? I don't know ... I think only a patent application can be but the case law is pretty sparse in this area so ???? Anyway ... this could be why an attempt to swear behind was not made because establishing due diligience, as interpreted by the USPTO, is nearly impossible except for short periods of time.

      Delete
    5. Assuming that the declaration establishes that the article is their own invention, the article wouldn't be BEFORE the invention thereof. Instead, the article would be simultaneous with (i.e., not before) the invention.

      Except that an article isn't an invention. It could well be proof of conception, but in this case it is apparently not proof of reduction to practice.

      Thus, you don't need to establish that the invention pre-dated the article ... only that the invention and article are one and the same.

      Same as above. The problem for the applicant is that because of the way 102(a) is written, it doesn't do you any good to submit additional details about the publication. If you want to avoid talking about a 102(a) reference on the merits, then you MUST provide additional details about your date of invention. That's what 37 cfr 1.131 is about. A 132 declaration talking about derivation doesn't get you there.

      Is the article a constructive reduction to practice?

      No, it's not. Constructive reduction to practice is a "pretend" reduction to practice that you get when you file an application that meets the requirements of Section 112.

      Anyway ... this could be why an attempt to swear behind was not made because establishing due diligience, as interpreted by the USPTO, is nearly impossible except for short periods of time.

      I think you are exactly right. The moral of the story is that you can bar yourself, even inside of the supposed 1-year grace period.

      Delete
    6. LB said:
      >In 102(a), the phrase "by others" doesn't modify
      >"printed publication.

      Grammatically, I think you're right.

      Yet the PTO clearly takes the position that you can remove a 102(a) reference by asserting that it's "not by 'another'", see MPEP 706.

      So maybe in situations like Abe, the reference is really being used under the "invention was known or used by others in this country" prong?

      LB, does your analysis change under this other prong?

      Delete
    7. Karen, you are right about MPEP 706, and with a little more research it turns out that the MPEP is correct. The piece I was missing was In re Katz (CCPA 1982), which you've discussed on this blog before. In that case, the court said that the "by others" in 102(a) must be understood to refer to printed publications, even thought it's not what the statute actually says, since that would otherwise negate part of the "grace period" provided by 102(b). Somebody smarter than I can perhaps tell us whether the In re Katz court was right or not. It strikes me as a significant rewrite of the statute's plain language, but I've not yet been appointed to the court.

      Anyway, per In re Katz, the Board's reasoning turns out to be right, even though they should probably have been looking at MPEP 715.01(c), rather than MPEP 2136, as the latter is clearly about 102(e). Under In Re Katz (and MPEP 715.01(c)), the applicant can disqualify the publication if it establishes that the publication describes the work of the applicant, i.e., the inventors named in the application. Here, they should have said that the article represented the work of all 4 inventors (or fixed the inventorship in the application). Since they didn't, the Board was correct that the publication was the work of "another," since that's effectively what the declaration said.

      As to Color me Confused's original question, the Board is making a fine distinction between a "publication by another" and "invention by another". Because the declaration said that the publication was derived from the work of two of the four inventors, it didn't properly establish that the publication was the work of the four inventors. However, because the declaration also said that the publication was about "our invention," the Board decided that the declaration was sufficient to establish that the publication described the invention of all four inventors, and thus showed that 102(f) doesn't apply. Yes, this is somewhat inconsistent, logically, but it's an ambiguity that was created by the applicant. As the Board notes, it is the applicant's responsibility (under In re Katz) to resolve the ambiguity.

      Karen, thanks for calling me out on this - I'm glad to know what was really going on here. My apologies to "Color me confused" as well - you can color me confused as well.

      Delete
  2. I agree with Applicants that the hypothetical (or fact of the case?) (inventors A, B, C, and D and claims directed to X, Y, Z, Y’, Y”, Z’, and Z”) is “an extremely common occurrence.” If so, patents and patents applications of similar situation out there need be concerned with this Board decision?

    A similar situation is seen in Eli Lilly & Co. v. Teva Pharms. USA, Inc., 657 F.Supp.2d 967 (S.D.Ind.2009), with a different outcome.

    Notwithstanding the above, as I read In re Land, it appears to me to be still an open question whether a claim directed to what is disclosed in a published article, e.g., with authors A and B and inventors A, B, C, and D, cannot be secured.

    Peter Chang

    ReplyDelete