Monday, February 14, 2011

Mistake #7.0 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll discuss Mistake #7: Using attorney argument when evidence is required. Actually, I'll take two posts to cover this topic, so consider this to be a post on Mistake 7.0. (Update: The second half of this post can be found here: Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required.)

The MPEP discusses the use of declaration evidence to refute a prima facie case of obviousness. Therefore, some practitioners have the mistaken impression that this is the only time evidence is required. Not so. Other types of arguments that may require evidence instead of attorney argument include:

  • Whether a specification is enabling
  • Whether a reference is enabling
  • Meaning of a claim term
  • Knowledge of a POSITA
  • Teachings of a reference
  • Modifying or combining references
I'll talk about the first four of these in today's post. I'll save teachings of a reference and modifying  / combining references for the next post in the series. A general guideline for all situations is that the Board may require evidence when your argument relies on more than the plain teachings of the reference.

Applicants often respond to enablement or written description rejections by pointing to portions of the specification and arguing that the claims are enabled in view of these teachings. If these teachings are self-explanatory, then attorney argument is probably sufficient. However, if one needs to go beyond the explicit teachings of the specification to see that the claim is enabled, evidence may be required.

This point is illustrated in Ex parte Roche (BPAI, 2009). 
The Examiner has presented a facial case that determining a threshold value for a particular fuel rod is not predictable. The Examiner has further presented a logical basis to conclude that one of ordinary skill in the art would be required to conduct undue experimentation to determine the threshold value. In opposing the Examiner’s reasoning, Compagnie chose not to rely upon evidence in the appeal. Instead, Compagnie relies upon unsupported attorney argument that the specification provides examples of how the threshold might be determined and postulates a manner in which one of ordinary skill in the art could potentially determine a threshold value. We do not credit Compagnie’s attorney argument as it is not commensurate with the teachings of the specification. See, Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Similarly, when an Applicant takes the position that a reference is not enabling, evidence may be required, especially when the position contradicts the reference itself.

This issue arose in Ex parte Kim (BPAI, 2009). The application claimed a semiconductor manufacturing method which included the step "performing a non-selective etching from said substantially planar surface to a said predetermined structure formed thereon." The Applicant argued that the reference did not explain how to make the etching process non-selective as claimed, i.e., that the disclosure in the reference was not enabling. The Applicant noted that the reference did not include any details for non-selectivity, while the Applicant's own non-selective etching was described in detail.

The Board disagreed:

   IBM has offered no credible argument nor evidence that the RIE of Hummler is “selective” as to certain materials shown in Fig. 9 versus “non-selective”. To the contrary, Fig. 10 illustrates that the nitride layer 42, as well as the insulating material 50, and the pad nitride 14, are all removed in the RIE to present a substantially uniform planar surface in Fig. 10A.
   IBM's remarks regarding the alleged non-enabling disclosure of Hummler are not well taken. Hummler is presumed to be enabling for all that it describes and IBM has proffered no evidence to the contrary. See, In re Sasse, 629 F.2d 675, 681 (CCPA 1980)

Attorney argument may not be appropriate in explaining the meaning of a claim term. Instead, a dictionary definition or other evidence of what the term means to a person in the art may be required.

This point is illustrated by Ex parte Pettinato. The Examiner read the claim term "stenocapturing device" as being "broad enough to include a voice recognition transcription device," while the Applicant asserted that "it is known to those skilled in the art of closed captioning that a stenocaptioning machine is operated by a human being." The Board agreed with the Examiner's interpretation, noting that "Appellant has not provided a definition from a recognized source in the art, but has only provided attorney argument."

Statements about the knowledge of a person of ordinary skill in the art can be another instance where evidence rather than attorney argument is required. Ex parte Cobb involved an indefiniteness rejection for the term "standard size magnetic stripe gift card." The Applicant asserted that "there is a standard size for magnetic strip gift cards, and that is the size of a credit card, namely 54 mm by 86 mm."

The Board affirmed the indefiniteness rejection, explaining that:
Appellant presents only argument and but no evidence indicating that a person of ordinary skill in the art would have known that there was at the time of invention a standard size for magnetic strip gift cards, or that that size is the same as credit cards. Appellant does not argue that the Specification offers any clarification as to what constitutes a “standard” size gift card.
As another example of assertions about the understandings of a POSITA, in Ex parte Rosenberg the Applicant argued that if the changing pad disclosed in one reference were modified to absorb urine per the teachings of another reference, "it would quickly become stinky and unusable."

The Board found this statement to be mere speculation unsupported by evidence:

The Appellant, however, does not explain the basis for the assertion that a pad with absorbed urine is “unusable.” The argument amounts simply to speculation by the Appellant that is unsupported by the prior art or any other objective evidence, such as declaration testimony. Mere argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
My two cents: In most of the file histories I've read, the Examiner never said "evidence is required." It was only in the decision on appeal that the Applicant learned his "mere attorney arguments" weren't entitled to consideration. All is not completely lost, since you can re-open the case after appeal in order to introduce evidence. But clearly it's better to know this the first time, to avoid a second trip to the BPAI.

Another good rule of thumb: if your inventor gives you information about how the technology works, or what a reference teaches, you should probably introduce this as declaration evidence rather than pasting this into your response.

14 comments:

  1. Karen,

    This is my number 1 pet peeve about how some practitioners go about appealing a case.

    The rebuttal "evidence" must be placed into the record well before the Notice of Appeal is filed and if it is in response to a Final rejection, you better include a good and sufficient showing of why it was not earlier introduced.

    Getting the procedure right is only 10% of the battle. You also need to get the evidence to say the right thing in terms of the legal tests that need to be overcome.

    Good post. Thanks.

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  2. "Appellant presents only argument and but no evidence indicating that a person of ordinary skill in the art would have known that there was at the time of invention a standard size for magnetic strip gift cards, or that that size is the same as credit cards. Appellant does not argue that the Specification offers any clarification as to what constitutes a “standard” size gift card. "

    Lulz, applicant cannot take official notice lololololol.

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  3. There remains the problem of how one is to prove something like requirement of undue experimentation. I think maybe there needs to be a discussion about whether "proof" is required, versus enough "evidence" to shift the burden. 132 Decs used to do the trick, but I haven't seen an Examiner willing to defer to the sworn testimony in an affidavit lately, and I hear that others are having this same problem. Inventor decs are discounted as impartial, while affidavits fromt he applicant's customers are discounted as either lacking necessary expertise (for utility patents) or having too much expertise (for design patents). Whom else are we to go to for Decs? $70,000 a pop uni profs? That's just not practical. It's like the Examiner's opinion, as one approximating one of ordinary skill in the art, trumps everyone else.

    Does the BPAI have the same attitude about inventor Decs? If affidavits are useless to us, what can we possibly do?

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  4. Correction: When I said "Inventor decs are discounted as impartial," I meant "not impartial."

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  5. There is no bright line between relying on evidence versus argument. When an attorney argues based on the specification or on the text of reference, the attorney is using an evidence based argument.

    In some cases, the Board will read the evidence and reach the same conclusion as the attorney, and the applicant wins.

    But in anything like a close case, the Board can always label any conclusion an attorney reaches from the evidence as mere attorney argument.

    For example, in Ex parte Roche, the attorney apparently made heavy use of the specification in presenting his argument, and likely felt that he was not relying on mere attorney argument. The Board may well have been correct, but the summary raises more questions in my mind than it answers.

    It might well be that an examiner can completely discount an inventor declaration as not being impartial, but if that is the only response given, I think the applicant's chances with the Board are better with than without the declaration.

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  6. I'm appealing a case right now where the examiner dismissed several expert declarations as "mere opinion and not evidence." Let's see what the BPAI is going to say.

    My take is that you should submit declarations from the applicant and experts to establish "the facts" and then, as the attorney, you argue those facts in view of the law.

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  7. The 2009 cases Karen cites demonstrate the "burden of proof" error that infected most Board decisions with reversible error before January 2010. Though the excerpts here are too short to allow a thorough analysis of what happened, the short squibs suggest that the Board neglected the burden issue, twice.

    MPEP § 2164.04 states the law correctly, that the specification is to be presumed enabling, and that it's the PTO's burden to "explain why" there's a shortcoming. Under a "preponderance of evidence" standard, if the spec is capable of two equally good readings, the appellant gets the benefit of the burden of proof.

    Nonetheless, I agree that there is too little evidence submitted in too many appeals.


    TINLA IANYL --

    That's not supposed to be happening. A dec is evidence, examiner argument is not. End of story. If the evidence is on one side, then the examiner can't possibly have a preponderance on his/her side. Call the SPE. And if that doesn't work, call the TC Director. And if that doesn't work, call Kappos' or Stoll's office.

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  8. >I'm appealing a case right now where the
    >examiner dismissed several expert declarations
    >as "mere opinion and not evidence."

    If a dec includes *facts* and then has the expert explain those facts, then the Examiner is supposed to consider that as evidence. Though I believe the Examiner is allowed to make a credibility determination.

    Based on the BPAI decisions I read, the BPAI finds that plenty of decs are deficient because they do *not* contain facts that support the declarant's opinion. IOW, the decs are mere opinion.

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  9. >Does the BPAI have the same attitude about
    >inventor Decs?

    As I noted in an earlier comment, the Board finds plenty of decs -- both inventor and non-inventor expert -- to be deficient. Usually for being conclusory opinion rather than opinion supported by facts.

    I don't have a sense for whether the Board generally finds a dec persuasive when it is based on fact.

    >[Discussion of decs being discounted as
    >having no credibility or as having too
    >much / not enough skill.]

    I don't recall too many instances where the BPAI discounts the dec because the declarant is not credible, e.g., is biased.

    I have seen some decisions that diss the declarant's experience or skill level.

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  10. >There is no bright line between relying on
    >evidence versus argument.

    Agreed. And you make a good point. I shoulda said that in my post.

    >in anything like a close case, the Board can
    >always label any conclusion an attorney reaches
    >from the evidence as mere attorney argument.

    Huh. Hadn't thought of it this way.

    Based on reading lots of decisions involving decs, it looks to me like when you stick to the plain teachings of the ref/ your spec then you don't need evidence. And the farther you stray from that -- and rely on stuff that may be implicit in the ref or simply isn't there at all but is knowledge of a POSITA -- the more likely it is you'll be dinged for not providing evidence.

    >When an attorney argues based on the
    >specification or on the text of reference, the
    >attorney is using an evidence based argument.

    Makes sense.

    Maybe when your argument strays too far from the evidence -- as I described above -- it stops being (acceptable) evidence-based argument and becomes (unacceptable) "mere attorney argument".

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  11. You state:

    "All is not completely lost, since you can re-open the case after appeal in order to introduce evidence. But clearly it's better to know this the first time, to avoid a second trip to the BPAI. "

    Just of curiosity - do you know of any files, where a rejection based on "argument not evidence" has resulted in a grant for the same claims once an expert declaration was actually filed?

    Our experience is the same as I seem to recognize here above, namely that the Examiner has an opinion and as such neither attorney arguments nor an expert declaration can change her mind.

    It seems that we have a bunch of applications in US being rejected over and over again no matter what we do. At the same time almost each and every one of those applications are long granted as patents in the rest of the world... A little bit frustrating in the long run!

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  12. >do you know of any files, where a rejection
    >based on "argument not evidence" has resulted
    >in a grant for the same claims once an expert
    >declaration was actually filed?

    Not off hand. Every once in a while I look into what happened after appeal, but not regularly.

    >Examiner has an opinion and as such neither
    >attorney arguments nor an expert declaration
    >can change her mind.

    My sense is that Examiners are of two types: always persuaded by expert affidavits; and never persuaded by expert affidavits. I just don't think Examiners have a lot of experience and/or training in how to properly evaluate declaration evidence.

    I didn't mean to suggest that the Examiner would be persuaded once the evidence was entered. In fact, I alluded to the opposite, by referring to "a second trip to the BPAI." IOW, you'd better be prepared to appeal again immediately if the Examiner isn't persuaded by your evidence.

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