Monday, July 11, 2011

BPAI reminder that declaration of unexpected results must include statement that results are unexpected

Takeaway: The BPAI found that the Applicant's evidence of unexpected results was insufficient to rebut the prima facie case of obviousness because the expert declaration failed to state the results were unexpected. Arguments in the Appeal Brief did characterize the results as unexpected, but the Board pointed out that "attorney argument is not evidence." (Ex parte Uchida, Appeal 2011000486.)

Details:

Ex parte Uchida
Appeal 2011000486; Appl. No. 11/731,595; Tech. Center 1600
Decided: July 7, 2011

The claims were directed to a chemical composition. One of the limitations at issue read "the inorganic heat generating agent is magnesium sulfate having an average diameter of from about 0.01 μm to about 40 μm."

The Examiner rejected the claims as obvious. On appeal, the Applicant argued that the average diameter limitation was not taught or suggested by the combination of references. The Appeal Brief also referred to previously submitted evidence showing that the claimed particle diameter produced unexpected results.

The Board found that the claim language "to about 40 μm" was broad enough to encompass the 50 μm particle in one of the references. The Board also found that the evidence of secondary considerations was flawed:

Although the Uchida [expert] Declaration shows that 1 micron particles produce a slightly higher maximal temperature than 50 micron particles, neither the Specification nor the Declaration states that this result was unexpected. Cf. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“[W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.”). Here, the only characterization of the results as unexpected is in the Appeal Brief, and attorney argument is not evidence.
(Emphasis added.)
The Board also criticized the evidence as not being commensurate with the claim scope. "[T]he claims encompass a particle size range of about 1 μm to about 40 μm, and the evidence shows results only at the lower limit of the claimed range."

Having found the record "devoid of evidence" that actually showed unexpected results, the Board affirmed the obviousness rejection.

My two cents: If you're spending the time and money to submit evidence of secondary considerations, do it right. Note that two of the points made by the Board apply to all types of secondary considerations:
  • In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“[O]bjective evidence of non-obviousness must be commensurate in scope with the claims…”). 
  • Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)("However, arguments of counsel cannot take the place of evidence lacking in the record.").
Also be aware that specific types of secondary considerations (e.g., commercial success, unexpected results, etc.) have other requirements. So look up the relevant case law and make sure your evidence complies. For example, the Board didn't mention this in Uchida, but the unexpected results doctrine requires that the results be unexpected as compared to the closest prior art.  
  • In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”).

      12 comments:

      1. You raise a very good point. I have an application on appeal right now to the BPAI where applicant had submitted evidence of secondary considerations including commercial success and copying. Many people forget that you have to show a nexus between the commercial success and the claimed features of the invention. The Examiner acknowledged the client had demonstrated commercial success but made no statement with respect to whether the applicant had established a nexus. Applicant had submitted declarations from the applicant and several industry experts (the declarations provided credentials, industry experience and established a foundation for their opinions) that linked the commercial success to at least one claimed feature. The applicant also provided evidence demonstrating that the commercial success was not due to other factors such as extensive advertising. However, the Examiner dismissed the declarations from the experts as being "mere opinion" and, as already stated, did not address the applicant's nexus or other arguments. I've since found out this happened a lot during the previous PTO adminstration as there was an informal policy that only the BPAI was allowed to decide whether evidence submitted by the applicant with regard to secondary considerations overcame the examiner's obviousness rejections.

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      2. >informal PTO policy that only the BPAI was
        >allowed to decide whether [secondary
        >considerations evidence] overcame the
        >examiner's obviousness rejections.

        I've never heard of such a policy. But it does seem to me, based on talking to other practitioners and on reviewing lots of file histories, that it's unusual for an Examiner to be be persuaded by secondary considerations. Perhaps the average Examiner doesn't have enough experience with weighing evidence, and so he is more comfortable passing that task on to the BPAI.

        The BPAI isn't often persuaded by evidence either. It seems to me that most Applicants make one or more fatal mistakes in the type of evidence and/or statements made in delcarations. Like forgetting to assert "unexpected", failing to compare with closest prior art, conclusory opinions unsupported by fact, etc.

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      3. "It seems to me that most Applicants make one or more fatal mistakes in the type of evidence and/or statements made in delcarations."

        I agree, Karen. That's why I always research BPAI cases where the BPAI found the secondary considerations to be persuasive and use them as a guide in terms of the types of evidence I provide to the examiner and the arguments I make based on that evidence.

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      4. My feeling is that not only should an affiant not state that results are "unexpected" in an affidavit, but that such a statement should be prohibited or, if it is included, ignored, just as an affiant statement that something is "unobvious" would be of no moment. Whether results are "unexpected" or not is much more akin to a legal conclusion than a element of fact which can be testified to. Unexpected to whom? Certainly not to the inventor, who would not have performed the experiment if there were not some expectation of the desired result.

        The proper place, and the only proper place, to assert that a result is "unexpected" (which is, after all, only a synonym for "unobvious", in the same way "inertia" is only a synonym for "mass") is in attorney argument. The charge of the Board is to decide whether something should or should not have been unexpected based on the teachings of the prior art, the state of knowledge in the art, and the factual averments of the affiant.

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      5. After reading the Board's opinion, it appears the Board misapplied the CAFC precedent they cited to. The result may not be the wrong one, but the reasoning is nothing but applesauce.

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      6. >Whether results are "unexpected" or
        >not is much more akin to a legal conclusion
        >than a element of fact

        Robert, you bring up an in interesting point. But I don't agree with your reasoning.

        Yes, non-obviousness is a legal conclusion, which means declarants shouldn't make that ultimate conclusion, but should instead testify as to facts which lead to that conclusion.

        But unexpected results are just that ... results that are unexpected to a POSITA, and that's exactly the role in which declarant is testifying.

        >would not have performed the experiment if
        >there were not some expectation of the
        >desired result.

        Well, I don't deal with unexpected results much in my technology area ... but I disagree. When conventional wisdom says an area of investigation isn't promising but an inventor realizes that it is promising, that's precisely when the inventor is most "deserving" of a patent. Right?

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      7. >the Board misapplied the CAFC precedent
        >they cited to [In re Soni]

        How so?

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      8. >Many people forget that you have to show a >nexus between the commercial success and the >claimed features of the invention.

        Wow. Then perhaps many people should consider a different line of work.

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      9. >Many people forget that you have to show a >nexus between the commercial success and the >claimed features of the invention.

        I dunno how many practitioners who lose on commercial success truly don't know that a nexus is needed. My impression is that many practitioners present evidence on the issue but the BPAI often finds the evidence insufficient to show a nexus.

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      10. Karen, you say twice in your reply to my posts that you "disagree", but then you say nothing that disagrees:

        "Yes, non-obviousness is a legal conclusion, which means declarants shouldn't make that ultimate conclusion,"

        precisely

        "but should instead testify as to facts which lead to that conclusion."

        precisely

        "But unexpected results are just that ... results that are unexpected to a POSITA, and that's exactly the role in which declarant is testifying."

        almost right, or more accurately, sometimes right. A declarant in most cases is testifying as to the objective facts known to the declarant or otherwise to the personal knowledge of the declarant, not as a PHOSITA. I can think of at least one case where I have had affiants take the shoes of a more general "person skilled in the art," and that is when an examiner insists on interpreting a claim term with excessive breadth, without factual justification, i.e., without making a factual determination as to how a person skilled in the art would interpret the claim term. In such a case, I have simply had the inventor testify that, speaking as a person skilled in the art, such claim term would be interpreted by a person skilled in the art in such-and-such way.

        Having an affiant "testify" to "fact" that a result was "unexpected" would be exactly analogous to having a defendant "testify" to the "fact" that she was "not guilty". It's legally impermissible, because it's a question of law that must be decided in view of the facts.

        When you ask "How so?" about In re Soni, I get the sense you haven't read In re Soni. The case certainly had a favorable outcome for the appellant in this case and the Board made no effort to distinguish Soni from the case at hand, but instead merely quoted from the case and then proceeded to misinterpret the quote. The quote was: "[W]hen an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary." The Board misinterprets this to mean that both the requisite "demonstration" and the "statement" need be found in the affidavit. Nonsense, and unallowable, for the reasons I've already detailed. The proper place for the applicant to "state that the results were unexpected" is in the arguments in the response or brief.

        "When conventional wisdom says an area of investigation isn't promising but an inventor realizes that it is promising, that's precisely when the inventor is most 'deserving' of a patent. Right?"

        Of course. Think about what you're saying. If an "inventor realizes that an area of investigation is promising", then the "unexpected results" cannot be "unexpected" to her. They must perforce be "at least a little bit expected". "Unexpected" doesn't mean "unforeseeable to the inventor", it means "unusual, exceptional or surprising to a person skilled in the art at the time of the invention given the conventional knowledge of the art at that time". Which, again, is why an inventor cannot testify to something being "unexpected". I would go so far as to say that in many cases, an inventor making such a statement would be perjury, plain and simple.

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      11. >you say nothing that disagrees

        You say that "unexpected results" is a question of law and therefore isn't something a declarant should attest to. I disagree with that.

        >declarant in most cases is testifying as to
        >the objective facts known to the declarant
        >or otherwise to the personal knowledge of
        >the declarant,

        Agree that declarant often attests to facts known to the declarant. And further, that including such facts is important to avoid dismissal of the declaration as "conclusory opinion".

        >declarant in most cases is not [testifying]
        >as a PHOSITA.

        Disagree. My understanding of BPAI case law is the opposite, namely: declarant should speak as a POSITA, and failure to do so undermines the declaration.

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      12. >I get the sense you haven't read In re Soni.

        Nah, I did read it. I just wanted you to be more specific.

        >Board misinterprets this to mean that both
        >the requisite "demonstration" and the
        >"statement" need be found in the affidavit

        Agree that In re Soni doesn't explicitly state that. The Board is reading in between the lines, and actually acknowledged this by using the citation signal "Cf".

        >The proper place for the applicant to
        >"state that the results were unexpected"
        >is in the arguments in the response or
        >brief.

        Guess you and I will have to agree to disagree on this point. A number of BPAI cases support my position. I know of no Fed Cir case directly on point, though I think In re Geisler (116 F. 3d 1465, 1471) supports my position too:

        Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 of the Rules of Practice in Patent Cases. Instead, the only reference to unexpected results was a statement by Geisler's counsel. ... Geisler did not satisfy either of the Soni prerequisites. Soni is therefore of no help to Geisler.

        Note that I'm not talking about how the law "should" work, only about what the case law does say.

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