Monday, July 15, 2013

Board finds swear-behind with redacted dates insufficient to show conception before critical date

Takeaway: An Applicant submitted a swear-behind declaration along with two evidentiary exhibits: an invention disclosure document with redacted dates; and a letter directing outside counsel to prepare a patent application, with a date after the critical date. The Examiner refused to remove the reference as prior art, finding the evidence insufficient. The Examiner also indicated that by failing to remove the reference as prior art in an earlier appeal of the same application, the Applicant had admitted that the reference was prior art. The Applicant appealed, with the sole issue being the sufficiency of the swear-behind. The Board agreed with the Examiner that the evidence was not sufficient to support the inventor's declaration of conception before the critical date, and so affirmed the prior art rejection. However, the Board found that the Applicant had not admitted the reference was prior art. (Ex parte Busche II, PTAB 2013.)

Ex parte Busche II
Appeal 2012-010360; 10/969,819; Tech Center 2100
Decided:  June 28, 2013

The Applicant lost an appeal of prior art and § 101 rejections and then reopened prosecution by filing an RCE with amendments. In the first Office Action of reopened prosecution, the Examiner rejected all claims as being obvious over Morita in view of Zhang – the same combination used in the appealed rejections.

In response to the non-final Office Action, the Applicant submitted a swear-behind affidavit under § 1.131 and argued that Morita had been removed as a reference. The Applicant also submitted an additional declaration establish diligence. This additional declaration was executed by the attorney who prepared and filed the patent application, and was also styled as a declaration under § 1.131.

In a Final Office Action, the Examiner found the swear-behind to be unpersuasive and so maintained the rejection. As a preliminary matter, the Examiner noted that MPEP 715(II)(G) prohibits a swear-behind "where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art." According to the Examiner, the Applicant had admitted that Morita was prior art by failing to argue the point during the earlier appeal. The Examiner then evaluated the merits of the swear-behind and found it insufficient. "Exhibit A, which was submitted along with Applicant's 1.131 declarations, is not dated, so there is no way to know if the disclosure predates the prior art of reference."

The Applicant went to appeal – again – but this time the sole issue was the sufficiency of the swear-behind to remove Morita as prior art. With respect to the alleged admission, the Applicant took issue with the particular phrasing used by the Examiner ("the Examiner believes that Applicant has admitted") and argued that the Examiner's beliefs are irrelevant because the "Office must abide by a rule of law." The Applicant then address the merits of the declarations as follows:
At no point does the Office Action actually point to any of the four above-mentioned declarations and specificially address why this evidence is alleged to be insufficient. Each declaration is in evidentiary form. The declarations speak for themselves in supporting both conception prior to the June 29, 2004 and diligence until after the filing date for hte claimed invention of October 21, 2004. With the presentation of prima facie evidence supporting a conclusion that Morita is not prior art, the Office must either accept this evidence or provide a legally valid explanation as to why the evidence is insufficient.
The Examiner's Answer provided more specifics on the alleged deficiencies in the swear-behind declaration. The Examiner noted that the exhibit attached to the attorney's declaration of diligence was dated July 22, 2004, and so does not show conception or diligence prior to Morita's June 29, 2004 filing date (the critical date). The Examiner also noted that the exhibit attached to the inventor's declarations (an invention disclosure document) was not dated at all, and so cannot show conception before the critical date.

The Applicant filed a Reply Brief responding to the Answer. The Applicant noted that MPEP 715.07(II)  specifically allows for redaction of dates in the evidentiary document and concluded that "sworn affidavits are evidence" which "supports conception prior to June 29, 2004 and due diligence between conception until the filing of the patent application." With respect to the alleged admission as to Morita being prior art, the Applicant denied making a "clear admission" per MPEP 7.15(II)(G), and argued that "the Office offers no legal reference to support the conclusion that [a previous appeal arguing the merits of Morita] equates to a clear admission by Appellant."

The Board found the swear-behind to be insufficient and affirmed the § 103 rejection on this basis.  The Board first noted a procedural problems with submission of the declarations:
[N]one of the declarations were provided in the Appeal Brief's Evidence Appendix, let alone accompanied with the requisite statement setting forth where in the record the Examiner entered this evidence under 37 C.F.R. § 41.37(c)(1)(ix). Rather, the Brief's Evidence Appendix indicates "None."
Despite this procedural failure, the Board nonetheless decided to proceed on the merits. Regarding the Applicant's alleged admission of Morita as prior art, the Board held as follow:
Appellants can still seek to disqualify Morita as prior art under 37 C.F.R. § 41.37(c)(1)(ix) in a later proceeding based on evidence that was not at issue in the earlier proceeding ... Where, as here, Appellants have not clearly admitted that the subject matter relied upon in the reference is prior art (as indicated in the Reply Brief), the Examiner's reliance on MPEP 7.15(II)(G) and related case law is inappropriate ...  [T]his issue is based on newly-submitted evidence not considered previously which effectively creates a new record for our review and thus presents us with a new patentability question.
To explain why the contents of the declarations was insufficient to establish conception before the critical date, the Board first noted that a § 1.131 declaration must allege facts—not conclusions:
[T]here are insufficient facts on the record to support these conclusions [that the inventor conceived of the independent claims before the critical date]. The sole Exhibit A accompanying these declarations, namely the IBM disclosure document entitled "Main Idea for Disclosure CHA8-2003-0018," is unavailing in this regard. As the Examiner indicates, the disclosure document is undated, so we cannot say—nor have Appellants shown—that it existed before Morita's filing date of June 29, 2004. Rather, the record at best establishes that doc existed on July 22, 2004, when it was sent to Mr. Michael Hoffman of the attorney's law firm in connection with filing an associated patent application. Even assuming, without deciding, that this supports conception before July 22, 2004, that does not mean it supports conception before [the critical date of] June 29, 2004.
The Board then explained that the declarations failed to tie the disclosure document to the claims:
Apart from merely summarily asserting that the disclosure document describes "the present invention," the inventors' declarations say nothing more about the particulars of the document. Nor do Appellants' declarations explain how the disclosure doc specifically pertains to—let alone factually supports—their conclusions regarding the [independent claims] ... The IBM disclosure document therefore has little probative value regarding conception before Morita's filing date. As such, the inventors' conclusions regarding their conceiving the [independent claims] is essentially uncorroborated—a factor that while not dispositive for § 1.131 declarations, nonetheless significantly weakens their probative value.
The Board then found that the submitted evidence was insufficient to disqualify Morita and so affirmed the rejection.

My two cents: The Applicant did better than some – at least some documentary evidence was submitted to support the declaration. Unfortunately, this evidence fell far short of supporting the  statements in the declaration regarding the date of conception.

The earliest dated evidence was July 26 – the date outside counsel received the invention disclosure. According to Applicant arguments made in the two Briefs, this evidence supports conception before the June 29 critical date. How can the Applicant make this argument with a straight face? What accounts for those missing 4 weeks?

Most folks who read this blog know that the following sequence of events is commonly in large corporations with a defined patent procedure: inventor conceives; inventor fills out an invention disclosure form; inventor submits the form; form sits in a queue for review for inhouse counsel; inhouse counsel reviews and approves for drafting; approved disclosure is sent to outside counsel.

So maybe the Applicant was saying that it's reasonable to assume that these events take 4 weeks or so. Of course, the Applicant's argument that the "evidence supports conception" didn't come anywhere close to actually explaining this. This is pure speculation on my part.

But would such an argument have been persuasive? Suppose another declaration, by inhouse counsel, explained the corporation's procedures and gave average duration for each phase of process, where the averages added up to more than 4 weeks. Would this have been sufficient to show conception  before the critical date?

I wish the Applicant had made this argument and that the Board had spoken about this issue. I  don't recall any other Board decisions on point.

I'm going to say: No. I think you need facts about the application at issue, not information about typical or average.

Also, I say it wouldn't help if the time period was much shorter than 4 weeks. After all, it's certainly possible that the inventor conceived, filled out the form, was approved by inhouse counsel and sent to outside counsel all in the same day. We've probably all worked on rush filings like this. So I don't think you can assume that the application at issue is typical or average.

Finally, though the Board decline to reach the question of diligence, it's clear to me that the Applicant's evidentiary showing of diligence was also insufficient. The only evidence of diligence was a letter showing receipt of the disclosure document by the attorney, on July 26. No other evidence for the time period between July 26 and the filing date. Instead, the Applicant relied on two statements in the attorney-executed declaration: one about customary practice (describing the firm's typical time period from receipt of disclosure to filing as being 90-120 days); and another averring "diligent and active" assistance of preparation, review, and filing from July 26 until the filing date.

The "diligent and active" statement is not corroborated by evidence about specific activities undertaken by the attorney. As for the "customary practice" statement, once again I say that you need facts about the specific application at issue and not information about average and typical.


  1. Not the only mistake in the 131 declaration. The attorney, examiner and board all missed an important gate keeping requirement for 131 declarations. Which examiner or attorney can figure it out first? to find the answer "Arire fgngrq gung gur npgf bs pbaprcgvba jrer va gur H.F., ANSGN, be JGB pbhagel"

  2. Conception Date Date. The conception calculator estimates possible fertilization dates in the next 3 months based on biological cycles.