Board finds swear-behind declaration to be insufficient for lack of explanation

Takeaway: The Applicant attempted to remove a reference with a § 1.131 (swear-behind) declaration. The two-page declaration referred to an Appendix A included in the provisional application but did not comment or explain on the Appendix. The Board found that the Applicant had not provided any of the evidence needed to show conception, reduction to practice, or diligence. "[T]here is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention." (Ex parte Schmidt, PTAB 2014.)

Details:
Ex parte Schmidt
Appeal 2012005120; Appl. No. 10/156,131; Tech.Center 2600
Original Decision:  May 29, 2014; Rehearing Decision:  Sept. 12, 2014

In response to a prior art rejection in a Non-Final Office Action, the Applicant attempted to remove a reference with this § 1.131 (swear-behind) declaration:

The undersigned, attorney of record, makes this declaration on behalf of applicants and at the authorization of applicants' assignee.
STATEMENT OF FACTS:
...
     3)  The present application is based upon a provisional application No. 60/249,508, which was filed on May 30, 2001.
     4)  The noted provisional application contains method claim 1 and apparatus claim 5 which correspond to claims 11 and 1 of the present application.
     5) The noted provisional application also includes as an enclosure Appendix A which bears a date of December 13, 1999, and identifies one of the co-inventors, Mr. Mark T. Beasley. The noted Appendix includes drawings and some text  which can be found in the noted application. It is accordingly believed that the noted Appendix should support the noted claims.

In a Final Office Action, Examiner found the declaration insufficient. The Examiner first noted that § 1.131 requires the inventor to make the declaration. Second, there was "no clear date on the Appendix to proof the date is before the effective date of the used Art." Finally, "the figures in the Appendix didn't look similar to the current figures."

The Applicant appealed. The Appeal Brief included Appendix A in the Evidence Appendix, and the the Arguments section of the Brief addressed the Examiner's concerns:

     Page 85 of Appendix A includes the date of December 13, 1999. [The pages in the Appendix have] a number of dates, all of which predate the publication date of the Tsuchiya reference.
... Actually the figures in the Appendix are almost identical with those of the application. Appendix A predates the Tsuchiya publication date and includes drawings and even descriptive material which supports the claims on appeal. Note, for example pages 29-35, 41-43 and 77-82. These can be clearly found in the specification of the present application.
     Appendix A defeats the Tsuchiya reference and accordingly the noted two final references.

In the Response to Arguments section of the Answer, the Examiner asserted that the swear-behind declaration was not timely presented because it was presented After Final without "a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented."

 The Applicant file a Reply Brief to address these new points. The Applicant noted that the declaration was not filed After Final, but was instead filed with a Response to the preceding (Non-Final) Office Action. Furthermore, "Appendix A was mentioned in the Declaration and was filed initially with the provisional application of the present application."

The Board agreed with the Applicant that the Declaration was timely, but found it insufficient on the merits.

     Appellants’ Declaration does not use the words conception, reduction to practice, or diligence, or any explanation resembling them, but merely points to Appendix A of the provisional patentapplication and states that it “bears a date of December 13, 1999, and identifies one of the co-inventors, Mr. Mark T. Beasley” (Declaration ¶ 5). However, there is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention. Instead, the Declaration contains only the most general and vague statements about what the document shows. |
     We further note that the document identified as “Appendix A” is actually entitled “Appendix Documents” and appears to be a conglomeration of several different documents. Thus, it is unclear, without some explanation, how these different documents, one of which bears one of the named inventors’ names and the other which bears the December 13, 1999 date are related.
     As such, the Declaration fails to even provide any facts or evidence needed to establish conception or reduction to practice and it is not sufficient to antedate Tsuchiya. See In re Borokowski, 505 F.2d 713, 718 (CCPA 1974) (“The affidavits for the most part consist of vague and general statements in the broadest terms as to what the exhibits show along with the assertion that the exhibits describe a reduction to practice. This amounts essentially to mere pleading, unsupported by proof or showing of facts.”) (citing In re Harry, 333 F.2d 920 (CCPA 1964)).

Postscript: The Applicant filed a Request for Rehearing before the Board and lost this one too. (Rehearing Decision.) On Rehearing, the Applicant argued that the proper standard for sufficiency was: "Does the submission show the invention as claimed and does it support a date which predates the reference?" In the Rehearing Decision, the Board explained that the Applicant's standard was incorrect, and maintained that the Applicant's declaration failed to explained conception, reduction or diligence, comparing it to the declaration of In re Borokowski. In that case, a leading case on swear-behind practice, the Court described the declaration at issue as “amounting essentially to mere pleading, unsupported by proof or a showing of facts.”

My two cents: The Applicant made many mistakes here, both procedural and substantive. The Board didn't even appear to notice the first three in my list, but perhaps they wanted to get to the substance of the declaration.

First mistake: The § 1.131 declaration was not signed by the inventors. The declaration was instead in the name of the attorney of record "on behalf of applicants and at the authorization of the applicants' assignee." Not good enough. Yes, it's inconvenient to get inventor signatures during prosecution, but that's the rule. Note that a special  procedure is available if an inventor is unavailable: Example of a swear-behind (1.131) declaration executed by an assignee. The Board didn't notice this mistake.

Second mistake: The exhibit ("Appendix A") relied on as evidence wasn't filed with the declaration. Instead, the declaration noted that the Appendix A was included in the provisional. However, the text of § 1.131 reads: "Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained." Perhaps the relied-upon Appendix would be considered a part of the file history, since the application claimed the benefit of the provisional. And perhaps that's a good enough reason for omitting the document when filing the § 1.131 declaration. But the Applicant didn't explain this, at least not clearly. The Board didn't notice this mistake.

Third mistake: The exhibit ("Appendix A") relied on as evidence was filed as part of the Appeal Brief. That's too late. Yes, the Brief may include an Evidence Appendix, but that's for evidence which has already been entered. "[A]n amendment or other evidence submitted under 37 CFR 1.116 [After Final] or 37 CFR 41.33 [After Notice of Appeal] will not be entered as part of the record for the appeal unless entered by the examiner." (MPEP 1205.02 Appeal Brief Content). Both of those require an explanation of why necessary and not earlier presented. After Notice of Appeal, the burden is even worse: an explanation of how the evidence "overcomes all rejections under appeal." The Board didn't comment on this mistake. In fact, the Board didn't seem to differentiate between the filing of the declaration itself (properly before Final) and the filing of the Appendix A exhibits (improperly with the Brief.)

Fourth mistake: No explanation of how the exhibits disclose the claimed invention. While the rule itself doesn't include this requirement, the case law does. This case law is discussed in MPEP 715.07 Facts and Documentary Evidence, which summarizes the requirement as: "Each exhibit relied upon should be specifically referred to in the affidavit or declaration, in terms of what it is relied upon to show." The Board did bash the Applicant on this one.

Fifth mistake: No explanation of whether the Applicant relied on actual reduction to practice, or on constructive reduction to practice plus diligence. Certainly no evidence of diligence was provided. But you don't want to make the Board figure out that you're not relying on such.