Board of Appeals discusses §1.132 derivation declaration and rejection under §102(f)

Takeaway: An Applicant attempted to disqualify, as prior art, a publication listing two of the four inventors as authors. In a §1.132 declaration, the four inventors stated that the publication was derived from the work of the two author inventors. The Examiner found the declaration insufficient to overcome the §102(a) rejection because it did not attest to derivation from all of the inventors. The Examiner then added a rejection under §102(f) ("did not invent"). The Applicant appealed, arguing that a derivation declaration was only required to attest to derivation from at least one inventor, and that the §102(f) rejection was in error since the Examiner had not identified an inventor not named on the application. The Board affirmed the §102(a) rejection, holding that the declaration must attest to derivation from the entire inventive entity in order to show the publication was not "by another." However, the Board reversed the §102(f) rejection, finding that the statement in the declaration which referred to "our invention" provided enough evidence of correct inventorship to overcome the rejection.

Details:

Ex parte Abe
Appeal 2010000029; Serial No. 10/128,474; Tech. Center 2400
Decided:  June 28, 2012

The Examiner rejected all claims under §102(a) by a publication ("XPath") authored by two of the four inventors and submitted in an IDS. The Applicant attempted to disqualify the Xpath publication as prior art by filing a derivation declaration under §1.132. The Examiner found the declaration insufficient, since MPEP §716.10 "requires that the relevant portions of the reference originated with or were obtained from applicant (i.e., inventive entity)" (emphasis added). However, the Applicant's declaration merely stated that the reference was derived from the work of only two out of the four inventor.

The Examiner also added a rejection under §102(f) ("did not invent"). The Examiner explained as follows:

Applicant has declared that only two of the four inventors have derived the relevant portions of the [Xpath reference]. Given the reference teaches all the claimed limitations, it is apparent that the inventive entity (Mari Abe, Scott D. Dewitt, Masahiro Hori, and Brad B. Topol) are not the sole inventors of the claimed invention.

In an Appeal Brief, the Applicant continued to argue that the §1.132 declaration had removed Xpath as prior art. The Appeal Brief also specifically addressed various dependent claims, arguing that the Xpath did not teach all the limitations of those claims. In explaining why Xpath had been removed as prior art, the Applicant asserted that a §1.132 declaration disqualified the reference as long as the reference was "derived from at least one Applicant," as opposed to the Examiner's requirement that the derivation be from the work of all inventors. The Applicant explained that the Examiner's reading led to the "anomalous result" that §1.132 declarations could be used when "all possible inventors (as described in the article) may not have been named as inventors" yet could not be used when "all possible inventors (as described in the article) have been named as inventors."

The Applicant turned to the §102(f) rejection. The Applicant first addressed the Examiner's statement implying the inventive entity must be incorrect by noting that inventorship was on record in the executed Declaration and Power of Attorney. According to the Applicant, the §102(f) rejection was in error because the Examiner had not identified any inventor not named on the declaration.

In the Answer, the Examiner handled the §102(a) rejection by simply stating that the declaration did not overcome the rejection. As to §102(f), the Examiner explained:

Example 2 of MPEP 716.10 requires that the relevant portions of the reference originated with or were obtained from applicant (i.e. inventive entity). Applicant has declared that the reference "A Visual Approach to Authoring XPath Expressions" is derived from the work of only two out of the four inventors. Therefore, it raises a question as to whether the inventive entity (i.e. Abe, Hori, Dewitt and Topol) are the sole inventors since the claimed subiect  matter was only derived from Abe and Hori. The Examiner requested it be made clear that Dewitt and Topol did not contribute to the claimed invention (e.g. they only contributed to a portion of the specification that was not claimed) in order to rule out the possibility that the inventive entity are not the sole inventors of the claimed subject matter.

The Applicant filed a Reply Brief noting that the Examiner's Answer amounted to a request to remove inventors, while inventorship is a question of fact and cannot be manipulated for the convenience of the Examiner. Moreover, the Applicant explained, inventorship is determined on a claim by claim basis:

Dewitt and Topol may be inventors of only some of the claims. Similarly, Abe and Hori may be inventors of only some of the claims. The fact that certain claims were not identically disclosed by the prior art article by Abe and Hori evidences that additional contribution was made to the claimed invention.

On appeal, the Board affirmed-in-part. The §102(a) rejection of the independent claims was affirmed, but the §102(f) rejection was reversed. The Board also reversed the §102(a) rejection of some of the dependent claims, finding that various features in dependent claims were not disclosed by the Xpath reference.

The Board clarified that attesting to derivation from a subset of the inventors was sufficient not remove the reference as "by another" under §102(a). "By another" means any difference in inventive entity, so the fact that only two inventors were listed as authors of the Xpath publication indicated that the publication was "by another." A §1.132 declaration attesting to derivation from all the inventors would thus disqualify the reference, by showing that the inventive entity is the same. However, derivation from only a subset of the inventors means the reference is still "by another" and is thus prior art. 

In reversing the §102(f) rejection, the Board explained that designation of the authors of a publication not raise a presumption of inventorship with respect to the subject matter disclosed in the article so as to justify a rejection under §102(f). (MPEP §715.01(c)). Such a rejection does require the Applicant to "provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct." (MPEP §715.01(c)). The Board found the Applicant did exactly that, by submitting a declaration signed by all inventor stating "the disclosure found in the [Xpath publication] is our own invention."

My two cents: Reading in between the lines, the Board's brief opinion suggests that the Applicant had simply misinterpreted the law on §1.132 derivation declarations. Yet the Applicant fought long and hard for its position, when it seems that the problem could be taken care of by rewording the declaration. Unless, factually, the Applicant simply couldn't make the statement that the two author inventors derived from the work of the other two (non-author) inventors? The Applicant's arguments suggested that inventorship may have varied from claim to claim. So maybe another approach would be to split the application into two, with different inventive entities? I gotta admit, I got a headache thinking about this one.

Was the Examiner off base in giving the §102(f) rejection? Essentially, the §102(f) rejection seemed to be the result of a discrepancy between Abe, Hori, Dewitt & Topol being named the inventive entity and a finding that a publication authored by Abe & Hori alone disclosed all claim limitations.