Sunday, July 7, 2013

Board reverses when Examiner ignored merits of expert declaration

Takeaway: An Applicant submitted declaration evidence to rebut an inherency assertion about a commonly owned reference. The Examiner said the declaration wasn't persuasive because it was conclusory, lacked evidentiary support, and was submitted by an interested party (an inventor). On appeal, the Board reversed because the "Examiner’s response to the Declaration does not focus on the merits of the statements provided in the Declaration." The Board noted that the declarant's relationship with the common assignee put him in the "best position to provide statements regarding the properties of the products described in the Randall reference." (Ex parte Currier, PTAB 2010.)

Ex parte Currier
Appeal 2009011735; Appl. No. 10/957,745; Tech. Center 1700
Decided: May 27, 2010

The application on appeal was directed to wallboard. A representative claim on appeal read:
     1. A gypsum wallboard comprising:
     a gypsum core having a planar first face and a planar second face;
     a coated non-woven glass fiber mat facing material suitable for level 4 finishing adhered to and covering at least one of the planar first face and the planar second face of the gypsum core,
     said coated non-woven glass fiber mat facing material having been contacted (i) on a non-coated side and (ii) during preparation of the wallboard with an aqueous gypsum slurry that sets to form the gypsum core,
     wherein the non-woven glass fiber mat facing material comprises a majority of glass fibers of a fiber diameter between about 8 and about 11 microns and a fiber length between 1/4 and 3/4 inch,
     the glass fibers of the non-woven glass fiber mat facing material being bound together with an adhesive binder comprising an acrylic adhesive binder and
     wherein the non-woven glass fiber mat facing material has a coating comprising a dried aqueous mixture comprising (i) a mineral pigment, (ii) a polymer adhesive binder and optionally (iii) an inorganic adhesive binder on a free surface of said non-woven glass mat facing material and
     said coated non-woven glass mat facing material has a porosity which allows water to evaporate through said coated non-woven glass fiber mat from the gypsum core during the preparation of the wallboard.
(Emphasis added.)

The Examiner originally rejected the claims as obvious over a combination of references, and relied on Jaffee for teaching a glass fiber mat having the claimed fiber parameters. The Examiner asserted that level 4 finishing was "a latent property to the board rendered obvious by the prior art" and "Applicant has not made any showing to the contrary."

The Applicant argued that the fiber diameters and lengths disclosed in Jaffee (15-16 microns and 3/4 to 1 inch) were outside the claimed ranges. With respect to Level 4 finishing, Applicant asserted that "Jafee is also completely silent about the surface morphology of the mat ... Jaffee does not mention the prospect of coating the mat at all. Unquestionably, the preparation of a coated mat suitable for Level 4 finishing is not inherent to any of the embodiments disclosed or suggested by the Jaffee patent. "

The Applicant submitted an expert declaration under § 1.132 to support these arguments. The Declarant, Currier, was one of the inventors and was employed by the assignee. The declaration explained how the properties of glass fibers in the mat affect the level of finishing, and described the use of coatings to smooth the mat surface. The declaration then went into some detail about the problems faced in reducing fiber size and in achieving a proper amount of coating.

The Declarant specifically disagreed with the Examiner's characterization of Level 4 finishing as being a "latent property to the board rendered obvious by the prior art." The Declarant attested that the claimed combination of fiber parameters and adhesive binder led to a mat that was suitable for Level 4 finishing. "It is the combination of these elements that is important and isolated disclosures of these elements in separate disclosures does not suggest the surprising benefit obtained by their combination." (Emphasis added.)

The declaration also referred to "a family of gypsum board faced with non-woven glass mat facing material" ("the DENS products"), and stated that none of these products had a surface "suitable for level 4 finishing." The declaration also specifically stated that level 4 finishing was not present in the the product described in a commonly owned patent to Randall ('354 Patent).

In the next Office Action, the Examiner withdrew the previous rejection in favor of a different § 103 rejection. As the primary reference, the Examiner used another Randall reference – a continuation of the Randall patent discussed in the expert declaration. The rejection relied on Randall for a coated non-woven glass fiber mat having a fiber diameter in the claimed range. The rejection relied on Jaffee for the claimed fiber length. The rejection also asserted Randall's coating was "inherently suitable for level 4 finishing since it is compositionally identical to the claimed coating."

The Office Action commented on the Currier Declaration as follows:
The Currier declaration has been fully considered but is not considered persuasive. To the contrary, the declaration seems to support the conclusion that the board taught in Randall is suitable for level 4 finishing because the glass fibers taught therein are not exposed through the coating. The declaration states level 4 finishing is usually not obtainable because of the glass fibers' surface properties (paragraph 11). Furthermore, the selection of fiber sizes is considered to be obvious in view of the teachings of Randall with respect to surface finish, porosity, etc.
On appeal, the Applicant argued that Randall did not explicitly disclose the mat's surface characteristics or its suitability for Level 4 finishing. The Applicant also argued against inherency, as follows:
The Final Office Action also contended that the Randall coating, being "compositionally identical to the claimed coating" is inherently suitable for Level 4 finishing. That conclusion is simply wrong. What the Final Office Action ignored is that attaining a surface suitable for Level 4 finishing is not just a function of the coating formulation, but is a function of a non-obvious relationship among the coating formulation, basis weight of the coating and the characteristics of the mat being coated (fiber diameter, fiber length, mat binder adhesive and mat basis weight). In its attempt to find the necessary interrelationship obvious, the Office Action ignores the evidence provided by the Currier Declaration and then engages in a hindsight selection and evaluation of the teachings of Randall and Jaffee.
The Examiner maintained his position in the Answer, and commented on the declaration as follows:
Alan Currier's opinions are noted that are not persuasive in overcoming the examiner's inherency position because the opinion (a) is not supported by factual evidence, (b) is merely conclusory and fails to address the examiner's logic in concluding level 4 finishing is inherent to Randall, and because (c) Mr. Currier is a party interested in the outcome of the application.
The Board found the Applicant's arguments about Randall to be persuasive, and so reversed.The Board also commented specifically on the Examiner's treatment of the declaration evidence:
The Examiner’s conclusion regarding the Declaration did not appear to account for the fact that the Randall reference and the present application share a common assignee. Thus, the Declarant is in the best position to provide statements regarding the properties of the products described in the Randall reference. The Declarant Currier indicated that the invention of U.S. Patent 6,770,354 [the parent of the Randall reference] did not have a surface suitable for Level 4 finishing. The Examiner’s response to the Declaration does not focus on the merits of the statements provided in the Declaration. Thus, the evidence presented in the present record does not support the Examiner's position that the claimed characteristics are inherent in the product of Randall.
Since the Examiner has not properly considered the submitted evidence, the rejection cannot be sustained.

My two cents: The Examiner implied that the inventor's declaration wasn't credible because he was an interested party. What does "interested" mean here? The vast majority of inventors don't have a financial interest in the patent itself because they assign their rights to their employer. Some percentage of inventors get a monetary reward when the patent issues, but not all do.

Is the Examiner's concern actually that an inventor is still "interested" simply because his name is on the patent, and ...what ... it makes him feel good to have the application issue? Is the concern instead that an employee is expected to sign whatever his boss or legal department tells him to?

The Examiner said Currier's opinions weren't supported by "factual evidence." Currier unequivocally stated that Randall's wallboard didn't have a Level 4 finish. Does this need to be supported by evidence? [The Board didn't seem to think so.] Presumably there is a product information sheet for the Randall wallboard that describes its finishing level as something other than Level 2. Perhaps this could have been submitted with the declaration as factual evidence to address this sort of concern.

Or maybe Currier's statement about the Randall wallboard should be viewed as a factual statement by one who knows about the products in question. Currier was a Director of R&D and "responsible for all product development in the Gypsum Division."

The Board didn't specifically say whether they viewed Currier's statements as opinions or fact. However, where the Examiner focused on Currier being an inventor with an "interest", the Board instead looked at it from a different angle: since Currier worked for the same corporation that owned the Randall patent, he was in a position to know the technology described in Randall. In the Board's eyes, this made him a knowledgeable declarant rather than a too-interested-to-be-believeable declarant.

Finally, in the real world the § 1.132 Declarant will often be the inventor, or maybe another employee of the assignee. After all, it's probably simpler, faster, and/or cheaper to get an employee involved than an outside consultant of some kind. And while those consultants don't typically have a financial interest in the patent application, they are often paid for their time in working on the declaration. To me, this would seems to make the credibility of the paid expert more suspect that that of the corporate employee. So who is a better pick for a § 1.132 declaration

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