Example of a swear-behind (1.131) declaration executed by an assignee

Takeaway: A §1.131 declaration used to swear behind a reference must be signed by all the inventors, unless "it is not possible to produce the declaration of the inventor." (MPEP 715.04(I)(D).) In such cases, "an assignee or other party of interest" can sign. The MPEP doesn't give much additional guidance on how a swear-behind declaration executed by the assignee is any different than one executed by an inventor, but an example of an assignee swear-behind can be found in Reexam 90/009,435 (available on Public PAIR).

Details:

Appl. 90/009,435
Volterra Ex parte Reexamination
Filing Date: April 6, 2009
(File history available on Public PAIR.)

The Patentee in an ex-parte reexam submitted a declaration under §1.131 to swear behind a reference. However, because one of the two inventors was deceased, the Applicant accompanied the §1.131 Declaration with a Petition under §1.183 requesting waiver of the signature of the unavailable inventor. (See MPEP 715.04(I)). The §1.131 signed by the remaining inventor included a statement that his co-inventor was deceased. The §1.183 Petition explained those facts, then stated:

Thus, for at least these reasons, the Patent Owner submits that this is an extraordinary situation, in which justice requires suspension or waiver of any requirement that all inventors sign the declaration. The Patent Owner requests that a suspension of the rules be granted under 37 C.F.R. § 1.183 and that the declaration under 37 C.F.R. §1.131 be accepted with the signature of the sole surviving inventor, Andrew J. Burstein.

The Petitions Office denied the Petition because an "alternative avenue that complies with the rules is available to obtain the requested relief." The Petition Decision explained that §1.131 specifically allows the Patent Owner to sign the declaration during a reexam. The explanation in the Decision also referred to MPEP 715.04(I)(D), which indicated that "an assignee, or other party in interest" can sign the declaration "when it is not possible to produce the declaration of the inventor."

After the Petition was Denied, the Applicant then resubmitted the §1.131 declaration that was signed by the surviving inventor, and submitted a new §1.131 declaration that was executed by the assignee. The assignee declaration read as follows:

Declaration of Prior Invention by Volterra Semiconductor  under 37 C.F.R. §1.131

I, DAVID OH, hereby declare:
1. I am the General Counsel and Vice President of Legal Affairs of Volterra Semiconductor Corporation, the assignee of the entire right, title, and interest in each of U.S. Patents No. 6,278,264, ("Flip-Chip Switching Regulator") and No. 6,462,522 ("Transistor Pattern for Voltage Regulator"), henceforth "the Burstein Patents." I am empowered to act on behalf of Volterra Semiconductor Corporation.
2. Andrew J. Burstein and Charles Nickel are co-inventors of the Burstein Patents.
3. Charles Nickel is deceased. Because it is not possible to obtain or produce a declaration by Charles Nickel, and because the assignee may make such a declaration in a reexamination proceeding even if the inventors are available, I make this declaration on behalf of Volterra Semiconductor Corporation under 37 C.F.R. §1.131(a) and MPEP 715.04(I)(D).
4. On information and belief, Andrew J. Burstein and Charles Nickel conceived of the inventions described in the Burstein Patents in the United States, and reduced them to practice, prior to February l, 2000, as described in Andrew Burstein's declaration entitled, "REPLY DECLARATION OF ANDREW BURSTEIN IN SUPPORT OF VOLTERRA SEMICONDUCTOR CORPORATION'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION," ("the reply declaration") dated September 25, 2009, the entirety of which is incorporated into the present declaration. The reply declaration and its accompanying Exhibits A-P were filed in each of the above-referenced reexamination proceedings in conjunction with the DECLARATION OF PRIOR INVENTION OF ANDREW J. BURSTEIN UNDER 37 C.F.R. §1.131 ("the Burstein Rule 131 declaration") dated February 22, 2010.
5. A copy of the Burstein Rule 131 declaration and the reply declaration (with supporting Exhibits A-P) is attached and forms part of the present declaration, with all statements therein declared again in the present declaration.
[Final section acknowledging penalties for willful false statements, referring to 18 U.S.C. §1001.]

The Examiner found the §1.131 declaration to be sufficient to remove the reference.

My two cents:  In the Volterra case, the assignee declaration merely stated that the inventor was dead. The assignee declaration did not include documentary evidence (a death certificate?) although the declaration of the surviving co-inventor did include a corroborating statement.

Note that this lack of documentary evidence is a special circumstance peculiar to reexam. The §1.131 rule itself specifically allows "the owner of the patent under reexamination" to sign the declaration. Notably, the rule also distinguishes between the patent owner and other types of non-inventors allowed to sign: "party qualified under §§ 1.42 [dead inventor] , 1.43 [legally incapacitated inventor], or 1.47 [missing or uncooperative inventor]." 

So outside of reexam, a swear-behind executed by the assignee is submitted under the dead/legally incapacitated provision, or the missing/uncooperative provision. Which means you definitely need to do more than state "inventor can't be found." You need to explain why it's not possible for the inventor to sign, and submit documentary evidence supporting this. MPEP 715.04(I)(D) explains that the evidence is like that you'd submit under the missing/uncooperative provision of § 1.47.

 Proof that the non-signing inventor is unavailable or cannot be found similar to the proof required for a petition under 37 CFR 1.47 must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).

As far as the contents of the assignee swear-behind declaration itself, I would look to this Voltera reexam as an example. The sections that differ from an inventor declaration are the description of the signer's position/role at the assignee, and the specific "empowered to act" statement (the first paragraph). And though it may seem a little strange for the signer (here, the General Counsel) to attest to actions of the inventor in the fourth paragraph, that's what a swear-behind is – attestation that the inventors conceived/reduced to practice. I note that in this particular example, the statement about inventor actions is made "on information and belief" and specifically refers to documentary evidence.

Finally, the Petition Decision also noted that "authority to take action by the assignee Volterra has already been established with the filing of a statement under 37 CFR 3.73(b)." In the Volterra case, this Right of Assignee statement was filed with the request for reexam. It's not clear whether you should file such a statement when submitting an assignee swear-behind during regular prosecution. I suppose it wouldn't hurt.

Board finds swear-behind with redacted dates insufficient to show conception before critical date

Takeaway: An Applicant submitted a swear-behind declaration along with two evidentiary exhibits: an invention disclosure document with redacted dates; and a letter directing outside counsel to prepare a patent application, with a date after the critical date. The Examiner refused to remove the reference as prior art, finding the evidence insufficient. The Examiner also indicated that by failing to remove the reference as prior art in an earlier appeal of the same application, the Applicant had admitted that the reference was prior art. The Applicant appealed, with the sole issue being the sufficiency of the swear-behind. The Board agreed with the Examiner that the evidence was not sufficient to support the inventor's declaration of conception before the critical date, and so affirmed the prior art rejection. However, the Board found that the Applicant had not admitted the reference was prior art. (Ex parte Busche II, PTAB 2013.)

Details:
Ex parte Busche II
Appeal 2012-010360; 10/969,819; Tech Center 2100
Decided:  June 28, 2013

The Applicant lost an appeal of prior art and § 101 rejections and then reopened prosecution by filing an RCE with amendments. In the first Office Action of reopened prosecution, the Examiner rejected all claims as being obvious over Morita in view of Zhang – the same combination used in the appealed rejections.

In response to the non-final Office Action, the Applicant submitted a swear-behind affidavit under § 1.131 and argued that Morita had been removed as a reference. The Applicant also submitted an additional declaration establish diligence. This additional declaration was executed by the attorney who prepared and filed the patent application, and was also styled as a declaration under § 1.131.

In a Final Office Action, the Examiner found the swear-behind to be unpersuasive and so maintained the rejection. As a preliminary matter, the Examiner noted that MPEP 715(II)(G) prohibits a swear-behind "where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art." According to the Examiner, the Applicant had admitted that Morita was prior art by failing to argue the point during the earlier appeal. The Examiner then evaluated the merits of the swear-behind and found it insufficient. "Exhibit A, which was submitted along with Applicant's 1.131 declarations, is not dated, so there is no way to know if the disclosure predates the prior art of reference."

The Applicant went to appeal – again – but this time the sole issue was the sufficiency of the swear-behind to remove Morita as prior art. With respect to the alleged admission, the Applicant took issue with the particular phrasing used by the Examiner ("the Examiner believes that Applicant has admitted") and argued that the Examiner's beliefs are irrelevant because the "Office must abide by a rule of law." The Applicant then address the merits of the declarations as follows:

At no point does the Office Action actually point to any of the four above-mentioned declarations and specificially address why this evidence is alleged to be insufficient. Each declaration is in evidentiary form. The declarations speak for themselves in supporting both conception prior to the June 29, 2004 and diligence until after the filing date for hte claimed invention of October 21, 2004. With the presentation of prima facie evidence supporting a conclusion that Morita is not prior art, the Office must either accept this evidence or provide a legally valid explanation as to why the evidence is insufficient.

The Examiner's Answer provided more specifics on the alleged deficiencies in the swear-behind declaration. The Examiner noted that the exhibit attached to the attorney's declaration of diligence was dated July 22, 2004, and so does not show conception or diligence prior to Morita's June 29, 2004 filing date (the critical date). The Examiner also noted that the exhibit attached to the inventor's declarations (an invention disclosure document) was not dated at all, and so cannot show conception before the critical date.

The Applicant filed a Reply Brief responding to the Answer. The Applicant noted that MPEP 715.07(II)  specifically allows for redaction of dates in the evidentiary document and concluded that "sworn affidavits are evidence" which "supports conception prior to June 29, 2004 and due diligence between conception until the filing of the patent application." With respect to the alleged admission as to Morita being prior art, the Applicant denied making a "clear admission" per MPEP 7.15(II)(G), and argued that "the Office offers no legal reference to support the conclusion that [a previous appeal arguing the merits of Morita] equates to a clear admission by Appellant."

The Board found the swear-behind to be insufficient and affirmed the § 103 rejection on this basis.  The Board first noted a procedural problems with submission of the declarations:

[N]one of the declarations were provided in the Appeal Brief's Evidence Appendix, let alone accompanied with the requisite statement setting forth where in the record the Examiner entered this evidence under 37 C.F.R. § 41.37(c)(1)(ix). Rather, the Brief's Evidence Appendix indicates "None."

Despite this procedural failure, the Board nonetheless decided to proceed on the merits. Regarding the Applicant's alleged admission of Morita as prior art, the Board held as follow:

Appellants can still seek to disqualify Morita as prior art under 37 C.F.R. § 41.37(c)(1)(ix) in a later proceeding based on evidence that was not at issue in the earlier proceeding ... Where, as here, Appellants have not clearly admitted that the subject matter relied upon in the reference is prior art (as indicated in the Reply Brief), the Examiner's reliance on MPEP 7.15(II)(G) and related case law is inappropriate ...  [T]his issue is based on newly-submitted evidence not considered previously which effectively creates a new record for our review and thus presents us with a new patentability question.

To explain why the contents of the declarations was insufficient to establish conception before the critical date, the Board first noted that a § 1.131 declaration must allege facts—not conclusions:

[T]here are insufficient facts on the record to support these conclusions [that the inventor conceived of the independent claims before the critical date]. The sole Exhibit A accompanying these declarations, namely the IBM disclosure document entitled "Main Idea for Disclosure CHA8-2003-0018," is unavailing in this regard. As the Examiner indicates, the disclosure document is undated, so we cannot say—nor have Appellants shown—that it existed before Morita's filing date of June 29, 2004. Rather, the record at best establishes that doc existed on July 22, 2004, when it was sent to Mr. Michael Hoffman of the attorney's law firm in connection with filing an associated patent application. Even assuming, without deciding, that this supports conception before July 22, 2004, that does not mean it supports conception before [the critical date of] June 29, 2004.

The Board then explained that the declarations failed to tie the disclosure document to the claims:

Apart from merely summarily asserting that the disclosure document describes "the present invention," the inventors' declarations say nothing more about the particulars of the document. Nor do Appellants' declarations explain how the disclosure doc specifically pertains to—let alone factually supports—their conclusions regarding the [independent claims] ... The IBM disclosure document therefore has little probative value regarding conception before Morita's filing date. As such, the inventors' conclusions regarding their conceiving the [independent claims] is essentially uncorroborated—a factor that while not dispositive for § 1.131 declarations, nonetheless significantly weakens their probative value.

The Board then found that the submitted evidence was insufficient to disqualify Morita and so affirmed the rejection.

My two cents: The Applicant did better than some – at least some documentary evidence was submitted to support the declaration. Unfortunately, this evidence fell far short of supporting the  statements in the declaration regarding the date of conception.

The earliest dated evidence was July 26 – the date outside counsel received the invention disclosure. According to Applicant arguments made in the two Briefs, this evidence supports conception before the June 29 critical date. How can the Applicant make this argument with a straight face? What accounts for those missing 4 weeks?

Most folks who read this blog know that the following sequence of events is commonly in large corporations with a defined patent procedure: inventor conceives; inventor fills out an invention disclosure form; inventor submits the form; form sits in a queue for review for inhouse counsel; inhouse counsel reviews and approves for drafting; approved disclosure is sent to outside counsel.

So maybe the Applicant was saying that it's reasonable to assume that these events take 4 weeks or so. Of course, the Applicant's argument that the "evidence supports conception" didn't come anywhere close to actually explaining this. This is pure speculation on my part.

But would such an argument have been persuasive? Suppose another declaration, by inhouse counsel, explained the corporation's procedures and gave average duration for each phase of process, where the averages added up to more than 4 weeks. Would this have been sufficient to show conception  before the critical date?

I wish the Applicant had made this argument and that the Board had spoken about this issue. I  don't recall any other Board decisions on point.

I'm going to say: No. I think you need facts about the application at issue, not information about typical or average.

Also, I say it wouldn't help if the time period was much shorter than 4 weeks. After all, it's certainly possible that the inventor conceived, filled out the form, was approved by inhouse counsel and sent to outside counsel all in the same day. We've probably all worked on rush filings like this. So I don't think you can assume that the application at issue is typical or average.

Finally, though the Board decline to reach the question of diligence, it's clear to me that the Applicant's evidentiary showing of diligence was also insufficient. The only evidence of diligence was a letter showing receipt of the disclosure document by the attorney, on July 26. No other evidence for the time period between July 26 and the filing date. Instead, the Applicant relied on two statements in the attorney-executed declaration: one about customary practice (describing the firm's typical time period from receipt of disclosure to filing as being 90-120 days); and another averring "diligent and active" assistance of preparation, review, and filing from July 26 until the filing date.

The "diligent and active" statement is not corroborated by evidence about specific activities undertaken by the attorney. As for the "customary practice" statement, once again I say that you need facts about the specific application at issue and not information about average and typical.

BPAI finds § 1.132 is improper mechanism for swear behind, even if some facts are within personal knowledge of attorney

Takeaway: In attempting to antedate (swear behind) a reference with a showing of conception then diligence, the Applicant first submitted a declaration under § 1.131 signed by the Applicant's attorney. When the Examiner indicated that a  § 1.131 declaration must be signed by the inventors, the Applicant refiled the attorney-signed declaration under § 1.132. The BPAI found both declarations to be insufficient, noting that the first was insufficient because it wasn't signed by an inventor, and the second because only a § 1.131 declaration is available for swearing behind a reference. (Ex parte Flynn, BPAI 2010.)

Details:

Ex parte Flynn
Appeal 2009008768; Appl. No. 11/550,050; Tech. Center 2100
Decided: March 11, 2010

The technology in the application on appeal involved a computer simulator for remote control locomotive systems. All claims were rejected as obvious. The Applicant attempted to remove a primary reference in one of the obviousness rejections by antedating, or swearing behind, the reference. One of the issues on appeal was whether the swear-behind declaration was effective.

In a first attempt to antedate the reference, the Applicant filed a § 1.131 declaration which purported to show conception "prior to 2002 and the March 2002 date of the Transport Technology reference" and diligence "from prior to 2002 to the filing of the parent application on June 25, 2002."  The declaration was filed with supporting documentation that included: a nine-page invention submission form; client correspondence authorizing the preparation of a patent application; and several more items of client correspondence with attached copies of a draft application, inventor comments, and a revised draft. Though the declaration was styled as a  § 1.131 declaration, it was executed by the Applicant's representative rather than the inventors.

In the next Office Action, the Examiner explained that the declaration was defective because a § 1.131 declaration must be executed by the inventors. The Examiner also found the evidence insufficient to establish conception or diligence.

In a second attempt to antedate the reference, the Applicant filed the same set of papers, once again executed by the Applicant's representative. But this time the declaration was styled as a § 1.132 declaration.

In the Answer, the Examiner found the § 1.132 declaration insufficient to swear behind the reference, explaining that § 1.131 is the only mechanism available for antedating. The Applicant did not file a Reply Brief.

The Board found both declarations to be ineffective in antedating the reference. The Board noted that plain language of § 1.131 requires an antedating declaration to be signed by all the inventors. Thus, the first declaration was ineffective. The Board found that the second declaration was also ineffective because § 1.132 is an improper mechanism for antedating:

A declaration under 37 C.F.R. § 1.132 is improper for antedating a prior art reference where such declarations are specifically provided for under 37 C.F.R. § 1.131. Rule 1.132 is essentially a default rule, allowing applicants to traverse rejections/objections where no other rule provides for a means (through declaration practice) to do so – “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” 37 C.F.R. § 1.132 (emphasis added). Rule 1.131 specifically provides the means by which a prior art reference may be antedated, i.e., it is a basis that is “otherwise provided for.”

The Board further explained that a § 1.132 declaration could be used in conjunction with a 1.131 declaration. That is, the Applicant could have submitted a § 1.131 declaration executed by the inventors, along with a § 1.132 declaration of facts within the personal knowledge of the representative. Finally, the Board noted that the Applicant could have used a § 1.183 petition to request a waiver of the invention signature requirement.

My two cents:  It appears that the attorney stuck to § 1.132 because some of the facts relating to diligence were facts within the personal knowledge of the attorney rather than the inventor. Even so, the rules seem pretty clear that § 1.131 is what you use for a swear-behind. And as the Board noted, you can file the § 1.131 in conjunction with a § 1.132 signed by the attorney and attesting to the attorney's personal knowledge (e.g., diligence).

I suppose an inventor could attest to facts of receiving a draft, responding with comments, and receiving a revised draft. But here, the attorney attested to "due diligence" being exercised from conception to filing. It does seem that the attorney rather than the inventor is the right person to attest to the legal conclusion of due diligence. So file two declarations, one by the inventor and one by the attorney.

The Board's suggestion of  a § 1.183 petition for waiver of the inventor signature requirement doesn't seem to fit the facts here. That is, there was nothing to suggest that the inventor couldn't or wouldn't sign. But it is useful to know this avenue is available.

Getting signatures from all the inventors during prosecution is probably difficult in a lot of cases because of the long delay between filing and appeal. I wonder if one of the reasons swear-behind isn't very common is that attorneys figure it would be too much trouble to track down inventors.

Can a draft application serve as evidence of conception in a swear-behind declaration?

In prosecution, a reference that is dated a few days or weeks before your application's filing date may provide an opportunity to swear behind the reference. But if you follow the conventional approach of using an invention disclosure document as evidence of conception, that may involve showing diligence for a long period up to filing of the application. What if you could use a draft of your patent application as evidence of conception? Now the diligence period would probably be much shorter. [If you need a refresher on swear-behind declarations, conception, and diligence, see my posts here, here, and here.]

I think using a draft application as evidence of conception is a viable strategy, given the right facts. I ran across a file history and corresponding BPAI opinion where the Applicant tried something like this, but blew it by not submitting the right documents as evidence of conception until it was too late. In a future post, I'll explain what went wrong in that case, and some lessons to be learned. This post will explain when and how to use a draft patent application as evidence of conception. I can't promise you this strategy will work -- I haven't run across any another file histories where this came up. So read through my explanation and decide for yourself.

A draft application is great evidence of conception in that – unlike an invention disclosure or technical paper – it's specifically written to describe and enable the claims. However, unlike an invention disclosure or technical paper, it's not written by the inventor. So on its face, an unfiled application may not appear to show conception by the inventor. This is the first obstacle to be addressed in using a draft application as evidence of conception.

I think inventor approval can provide this missing link. If the inventor approved the application for filing before the effective reference date, then I think we have conception by the inventor before the critical date. Along the same lines, an executed declaration of inventorship can provide the missing link. An inventorship declaration that is executed by at least one inventor before the effective reference date shows conception by the inventor.

If you don't have inventor approval/execution before the effective reference date, is the game over? Maybe not. If you can show that the application actually filed has no significant differences as compared to a draft application in existence before the critical date, doesn't that also provide the missing link? Doesn't that also show that the draft application reflects the inventor's conception? After all, the inventor later signed an inventorship declaration attesting that a very similar document described his invention.

So I think that under any of these fact scenarios, you have evidence of conception before the critical date. Of course, you still need evidence of diligence in filing, even if it's only for a few days or weeks. But that's going to be easier to deal with than the typical diligence period, because that starts much earlier when an invention disclosure is filed with the employer. 

As with any swear-behind declaration, a swear-behind relying on a draft patent application as evidence of conception should explain the correspondence between sections of the relied-upon document (in this situation, the draft patent application) and the elements of the pending claims. (See my previous posts mentioned above for more information.) The swear-behind declaration should also include an affirmative statement by the inventors that the draft application describes the claims. You should submit the draft application, as supporting evidence, along with the swear-behind declaration. You should also submit evidence that the draft was in existence as of the effective reference date.

Finally, you must comply with all the formalities of a swear-behind (e.g., signed by all inventors) and follow the rules to get the evidence entered (e.g., on non-final, with an RCE, or with a "good and sufficient" showing after final).

What do you think? Creative thinking? Or am I way off base?

BPAI reminds Applicant that formalities of swear-behind declaration are important

Takeaway: In evaluating a declaration under § 1.131 (swear-behind), the BPAI noted that the declaration did not comply with the required formalities. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors. The Board went on to find that the declaration lacked sufficient evidence of both conception and diligence, and then affirmed the prior art rejection since the Applicant made no substantive arguments against obviousness.

Details:
Ex parte Bianchi
Appeal 200702938; Appl. No. 10/327,489; Tech. Center 3600
Decided  January 28, 2008

The Examiner rejected as obvious over a combination of references. In response, the Applicant swore behind the secondary reference by filing a declaration under § 1.131. The Examiner did not withdraw the rejection, and the Applicant appealed. In the Appeal Brief, the Applicant made no substantive arguments but instead argued that the rejection was deficient because the swear-behind declaration removed the secondary reference as prior art.

The Board affirmed the rejections, finding that the Applicant had not submitted sufficient evidence of conception and/or diligence. The Board also noted that the declaration did not comply with formalities required by § 1.131. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors.

 ...

 

The Board indicated that

If the Appellants pursue the removal of Goodman as prior art by submitting an affidavit or declaration that fully complies with the requirements of 37 C.F.R. § 1.131, they should observe that the existing declaration ambiguously states that only one of the inventors is making the declaration in the text, while all inventors are signatories (FF 03 & 04). All of the inventors of the subject matter claimed must make the declaration. The Appellants should resolve this ambiguity by stating which of the inventors are actually making the declaration in any subsequent affidavit or declaration.

My two cents: Like the declaration of inventorship filed with an application, a § 1.131 declaration must be signed by all the inventors (with a few specific exceptions). But where the declaration of inventorship usually takes the form of a single document that names all inventors and is signed by all inventors, all the § 1.131 declarations I see use a different format. Specifically, a § 1.131 declaration is typically submitted as multiple documents, each signed by one inventor. All the documents include the same facts being attested to, and the same "information and belief" language. They differ only in the identification of the declarant/signatory.

As far as I know, you could submit a single document for a § 1.131, like a declaration of inventorship, as long as each declarant was named separately. The problem here was that one declarant was named as making the statements yet all inventors signed.

In an upcoming post, I'll discuss the sufficiency of the evidence and the timing of the declaration.

BPAI says foreign application can be used in swear behind to show constructive reduction to practice – under some conditions

Takeaway: On appeal, the Applicant argued that a foreign filing could be used to show constructive to practice in a swear behind declaration. The BPAI said that the foreign filing was constructive reduction to practice only if the US filing occurred less than a year after the foreign filing, citing In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). If the US filing took place more than one year after the foreign filing, § 119(a) does not allow the foreign application to be used as constructive reduction to practice.

Details:

Ex parte Saito
Appeal 200805777; Appl. No. 10/800,386; Tech. Center 2800
Decided  December 28, 2008

The technology in the application on appeal related to color bar codes. In the first Office Action, the Examiner rejected the independent claims as being anticipated by Ackley under § 102(e). The Applicant responded by attempting to swear behind Ackley, by showing conception before Ackley's filing date coupled with diligence from conception to the filing of Applicant's provisional (to which priority was claimed).

Specifically, the Applicant submitted evidence of conception in the form of Applicant's corresponding Japanese patent application, and a certified English translation thereof. As for diligence, the inventor's declaration included statements about preparation of the provisional application, spanning the time frame starting immediately before Ackely's filing date up to the filing of the provisional.

The Applicant explained the evidence as follows:

As stated in the Declaration of Takahlro Saito, during the period of time from just before October 18, 1999 to December 15, 1999, Mr. Saito has been working with Mr. Tetsuo Wada of Ehara Patent Office to modify and finalize the specification for the base U.S. provisional application No. 601170,815. Mr. Saito exchanged opinions with Mr. Wada and modified the specification numerous times during that period of time, while both Mr. Saito and Mr. Wada fulfilled other work related duties. Exhibit C is a draft specification dated December 10, 1999, which is a modified version of the disclosure shown in Exhibit A and was finished five days before filing the provisional application No. 601170,815. As shown and evidenced above, Mr. Saito and his patent attorney(s) had worked on the present invention with due diligence from just before October 18, 1999 (the 102(e) date of Ackley) to December 15, 1999 (the date of constructive reduction to practice). 

The Examiner maintained the rejection in a Final Office Action, explaining that the evidence was insufficient to show diligence. Specifically, the Examiner indicated that:

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the Ackley reference to either a constructive reduction to practice or an actual reduction to practice since the applicant's statements are vague as to diligence. For example, applicant states on page 1, paragraph 4 of the declaration filed 4 April 2005, "As far as I can recall" and "We exchanged opinions.. ." which are not concrete declarations of an established diligence since applicant is not sure when he says "As far as I can recall" and does not pinpoint specific conversations during a 2 year time period when it is stated that "We exchanged opinions ... while both fulfill other work-related duties".

The Applicant filed an After Final Response which included another swear-behind declaration. Like the first one, the second swear-behind declaration referenced the corresponding Japanese patent application. However, the second swear-behind did not include statements about, or evidence of, diligence. Instead, the Response asserted that the Japanese patent application was evidence of constructive reduction to practice before the critical date.

In the Advisory Action, the Examiner indicated that the second declaration was still ineffective to remove the Ackely reference. The Examiner took the position that filing of the Japanese application was only evidence of conception, and that diligence must be shown from the time of conception until the time of the US filing (almost a two year period). The Applicant then filed a Notice of Appeal.

In the Appeal Brief, the Applicant argued that Arkley was not prior art because the inventor "constructively reduced the claimed invention of the present application to practice by filing in Japan on November 28, 1997 before the § 102(e) date of Ackley." The Applicant also noted that although the Japanese application did publish, this was not a § 102(b) bar since the US provisional was filed less than one year before the publication.

The Examiner's Answer maintained that Arkley was prior art. The Examiner interpreted the Applicant's reference to the Japanese filing as reliance on a foreign priority date. The Examiner then cited Stevens v. Tamai (Fed. Cir 2004) for the rule that Section 119(a) prohibits reliance on a foreign filing for priority when the foreign filing is more than a year before the US filing, as was the case here. The Examiner further explained:

Appellant apparently mis-interpreted the statute to allow asserting priority benefit of the filing date of a foreign application if a later filed provisional was filed within one year of the filing date of the foreign application. This is not a proper interpretation of section 119(a) since 119(a) is available for an application for a patent and not for a provisional application which is not an application for patent.

According to the Examiner, the § 119(a) prohibition against relying on the foreign filing more than a year earlier had the following effect:

[T]he affidavit may at best be sufficient to show conception as of the applicant's foreign filing date of November 28, 1997 but is not adequate to establish constructive reduction to practice. As such, in order to disqualify Ackley as a 102(e) reference, diligence must be shown from the date of conception to the filing date of the Ackley reference. ... Due to a lack of claimed diligence, the arguments are not persuasive.

The Board decision first focused on "reduction to practice" in the first prong of § 1.131(b):

Thus, under the first prong of 37 C.F.R. § 1.131(b), Appellant has to establish reduction to practice prior to the effective date of the 102 (e) reference. Appellant’s declaration and arguments assume that to show reduction to practice as encompassed by “filing of the application” recited in 37 C.F.R. § 1.131(b) includes filing an application for the same invention in a foreign country.

The Board found that the Applicant had not established reduction to practice. The Japanese filing did not qualify as constructive reduction to practice per se because the phrase "the application" in § 1.131(b) refers to a US application, not to a foreign application. The case law nonetheless allows constructive reduction to practice through a foreign filing – but only if that foreign filing met the requirements of § 119(a). (See In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983)). But here the Applicant waited more than a year after the Japanese filing to file the US provisional application, and thus did not comply with § 119(a).

Having found no reduction to practice under the first prong of § 1.131(b), the Board turned to the second prong, which requires conception plus diligence. The Board acknowledged that the Japanese filing might be enough to show conception. However, the Board summarily stated that the Applicant had not provided "sufficient evidence" of due diligence during the required period (one day before the reference filing date to the filing of the Applicant's provisional). Therefore, the reference was not disqualified as prior art, and the prior art rejections were affirmed.

My two cents: The Applicant made a mistake in not making an argument on diligence using the originally submitted declaration. The Examiner said the diligence period was 2 years but the correct period was only 2 months. It's true that conception before the reference date must be shown. But the diligence period does not start at conception. The diligence period instead starts immediately before the reference date. (MPEP 715.07.) That is, unexplained gaps between conception and the reference date are allowed – just not unexpected gaps between the reference date and reduction to practice (actual or constructive).

Since the earlier "diligence" declaration was already in the record, the Applicant should have argued conception plus diligence as an alternative to the argument made (constructive reduction to practice).
Instead, the Applicant based the entire appeal on a statutory interpretation that was either creative, strained, or misguided.

The decision doesn't discuss the diligence evidence at all. So I can't tell if the Board didn't evaluate diligence (because no arguments were made on appeal) or evaluated it and found it lacking.

I wondered at first why the Board even brought up the point that a foreign filing can be used to show constructive reduction to practice, as long as the filing meets § 119(a). After all, if you meet § 119(a), you can go with a straight claim to foreign priority, in which case you don't need a swear behind. After reading the fine print in the decision, it appears to me that constructive reduction through a foreign filing could be useful if you forget to claim priority and it's too late to fix the priority claim through a petition.

BPAI finds swear-behind declaration insufficient for using different terminology than in the claims

Takeaway: In Ex parte Disney, the Board found that a swear-behind declaration did not show conception of a claimed spatial relationship because the claims used different terminology than the evidence. Specifically, the claims referred to the dimension as "vertical depth" and the inventor's notebook and invention disclosure form referred to the dimension as "long." Therefore, when differences in terminology exist between the evidence and the claims, you should also show that the terms are equivalent.

Details:
Ex parte Disney
Appeal 2008005465, Appl. No. 10/929,590, Tech. Center 3600
Decided: February 25, 2010

The technology in this application related to the structure of a transistor. The element at issue was:

first and second field plates disposed in the dielectric material of the first and second trenches, respectively, the first and second field plates having a first vertical depth ...
first and second gate members disposed in the dielectric material between the first and second sidewalls of the mesa, and the first and second field plates, respectively, the first and second gate members having a first vertical depth that is less than 20% of the first vertical depth.

Applicant submitted a declaration under § 1.131 to antedate the § 102 reference. The declaration attempted to establish conception before the effective filing date of the reference, coupled with diligence up to the time of filing of the application. The Applicant relied on a declaration from the attorney who prepared the application to establish diligence. The evidence submitted along with the inventor's declaration to establish conception included seven pages of notes and sketches from an inventor's notebook, a corporate invention disclosure form, and results from a computer simulation.

In the final Office Action, the Examiner alleged that the evidence did not show conception of the claimed depth relationship ("first and second field plates having a first vertical depth that is less than 20% of the first vertical depth"). Specifically, the Examiner alleged that:

"No teaching has been found in the Exhibits predating November 16, 2000, of said range. To the extent the Figures are of true scale, – and there is no statement on that either, the range appears not to be met by the figure illustrating the final structure, i.e., Figure 5K, in which the second vertical depth appears to be 25% instead of less than 20%."

The Appeal Brief argued against the Examiner's position by pointing to specific pages and figures in the three evidence documents and explaining how the claimed 20% range was described in these pages. After explaining the relevant portions of the evidence, the Appeal Brief concluded this argument as follows:

The evidence contained in the Declaration under 37 CFR 1.131 therefore clearly establishes the dimensional relationship recited in the relevant claims; namely, the vertical depth (i.e., length) of the gate members (3 pm) is less than 20% of the vertical depth of the field plate members (47 pm = Ld - TBox). Applicant respectfully submits that the range recited in claims 43-44 is fully supported in the Exhibits. Consequently, Baliga '372 should be removed from consideration as a prior art reference.

The Board did not discuss the showing of diligence, and instead moved directly to a discussion of whether the inventor declaration established conception of the claimed relationship between structures, namely, "first and second field plates having a first vertical depth that is less than 20% of the first vertical depth."

The Board found that the declaration was not sufficient. Where the Examiner took issue with the numeric ratio (less than 25% rather than less than 20%), the Board took issue with the terminology used to describe the dimensions. Specifically, the evidence referred to a vertical trench that was 3 um long, where the claim referred to the depth of the plates in the trench. The Board explained that:

The Rule 131 declaration submitted by Appellant to antedate the November filing date of the Baliga ‘372 reference clearly shows a gate poly and a field plate poly, but does not show a depth of the gate members that is less than 20% of another vertical depth (FF4, referring to the figure below showing a gate poly and a field plate poly, and the explanation “Added Vertical (trench) Gate 3μm Long; with Pbody 2.5 μm long, N+ Source 0.2 μm long”).

A measurement that is “long” is not an indication of depth (FF 4). Accordingly, we find that Appellant’s declaration does not prove that he invented the claimed vertical depths prior to the date of the reference to Baliga ‘372.

My two cents: When was the last time you wrote claims and didn't change the terms used by the inventor? That's a large part of what we patent attorneys/agents get paid for ... picking the right words. So I gotta believe this mismatch in terminology will be a common occurrence when you submit inventor-provided evidence with a swear-behind declaration.

The lesson here is not to ignore the discrepancy. Instead, you should explain it. It seems to me that dimensions in particular are easy to explain: depending on what your perspective is, length could also be considered width or depth.

From what I've seen, your best chance is to include the explanation of the discrepancy in the inventor declaration. You can try putting it in as a argument, and you might convince the Examiner that way. But if you go that route on appeal, you risk the Board ignoring your arguments because "[a]rgument of counsel cannot take the place of evidence lacking in the record" (Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)).

I also find it significant that the Board did not question the sufficiency of the showing of diligence. I've seen plenty of Board decisions that didn't reach the merits of whether the evidence showed conception / reduction because diligence was lacking. Therefore, I infer that there was nothing obviously wrong with the diligence showing. Furthermore, neither the Examiner nor the Board questioned the sufficiency of the evidence in showing any of the other claim limitations –  only the 20% limitation seemed to be an issue.

It's true that the Board found that this evidence had a hole in it, and you should take note of this. Nonetheless, I think this swear-behind was still a pretty good showing overall. Consider adding this application to your list of example swear-behind declarations – it's available in PAIR.

BPAI finds swear-behind insufficient for lacking details of diligence

Takeaway: In Ex parte Brown, the BPAI discussed evidence of due diligence in a § 1.131 (swear-behind) declaration. Despite the Applicant's submission of 32 exhibits of evidence, the Board found that the declaration was deficient in showing either actual reduction to practice or conception plus due diligence. "We have no evidence that the specific details of any of the claims were conceived prior to the applied art, no specific details of development activities of the claimed subject matter or of the drafting activities of the patent application, and no evidence that the attorney was diligent in constructive reduction."

Details: 
Ex parte STEPHEN JAMES BROWN
Appeal 2009002452, Appl. No. 09/237,194, Tech. Center 3600
Decided April 20, 2010

With regard to evidence of actual reduction to practice, the Board had this to say:

Many of the activities detailed in the declaration and exhibits bear little direct relation to actually reducing the invention to practice. Many of the activities are directed to establishing intellectual  property protection measures, obtaining speaking engagements, and planning for staffing needs. Others, such as proposing development timetables, are tangentially related, but show no actual reduction itself.

Next, with regard to diligence:

The period from  September 3 to 30 is unaccounted for. Further, no activity is shown between October 7 and October 27. To establish diligence for constructive reduction to practice, the attorney’s diligence must be shown.

The Board quoted the law for excusable lapses in diligence:

[I]t may not be possible for a patent attorney to begin working on an application at the moment the inventor makes the disclosure, because the attorney may already have a backlog of other cases demanding his attention. Thus, the courts have recognized that reasonable diligence is all that is required of the attorney. [] Generally, the patent attorney must show that unrelated cases are taken up in chronological order, thus, the attorney has the burden of keeping good records of the dates when cases are docketed as well as the dates when specific work is done on the applications.
Bey v. Kollonitsch, 806 F.2d 1024, 1028 (Fed. Cir. 1986).

The Board then applied the law of diligence to the facts: 

But there is no evidence of such a backlog or that if there was a backlog that it was taken up in chronological order. There is also no evidence showing that the period subsequent to the last documented attorney activity on October 29 up to the date of filing was excused activity. We are left with a large number of days in which no documented attorney activity occurred and no evidence that those days were excusable.

My two cents: This is a good teaching case of what not to do in a swear-behind.

Interestingly, the Board had no reason to even consider the swear-behind. The reference was filed in 1992. The application on appeal was a continuation-in-part filed in 1999, with the parent filed in 1992. Yet the Board found that the Applicant did not present any evidence whatsoever that the application was entitled to the parent's filing date. Without a valid claim to priority, the swear-behind is useless.

BPAI finds a swear-behind declaration that is good enough (Ex parte Test.com)

Takeaway: For an example of a swear behind (§ 1.131) declaration that the BPAI found convincing, see the reexamination appeal decision Ex parte Test.com. Note this one is an actual reduction to practice case, so no diligence is involved. This decision also shows that a declaration that does not show reduction to practice of every claim limitation can be still be sufficient if what is missing are "details which are obvious to one or ordinary skill in the art." (In re Spiller, 500 F2.2d 1170, 1178.)

Details: Earlier this year I wrote a series of blog posts on swear-behind (§ 1.131) declarations at the BPAI. (See Part I, Part II, and Part III.) In that same series, I also noted that a study by Patently O showed that the BPAI finds three-fourths of the swear-behind declarations that are at issue on appeal to be insufficient for one reason or another.

The reexamination appeal decision Ex parte Test.com, which found the swear-behind sufficient, is therefore worth a read. My earlier posts on swear-behind treatment at the BPAI stressed the importance of providing evidence, not just conclusory statements, and of tying the evidence to the claims. The Applicant in this case did just that. The declaration includes statements from 2 inventors asserting personal knowledge of reduction to practice, accompanied by 13 exhibits. The exhibits included press releases, promotion materials, screen shots of the software implementing the invention, and a licensing agreement between Test.com and the customer using the software. The declaration also includes statements by the inventors tying portions of the exhibits to particular claim limitations.

You can get a feel for what the Applicants relied on looking through the 7 pages in the Findings of Fact section of the BPAI decision. The Findings of Fact are arranged by exhibit. In these Findings of Fact, the Board summarizes the contents of the exhibit, followed by the declaration statement that relies on this exhibit. For example:

Exhibit 3
3-1. Exhibit 3 is a document from a press kit created by an advertising agency regarding the method of the present patent. (Exhibit 3, pp. 1, 2, see also Anderson Dec. 2).
3-2. Anderson declares that this press kit is dated prior to November 16, 1998 and “discloses that a private, secure corporate account can be used to administer established or customized tests online” which in conjunction with Exhibit 2, discloses limitations recited in claim 1. (Anderson Dec. 2, 3).

This application went to appeal because the Examiner found that the declarations were not sufficient. The Examiner found they were "[v]ague and general statements ... which 'amount[s] to mere pleading, unsupported by proof or showing of facts', and thus does not satisfy the requirements of 37 CFR 1.131." In particular, the Examiner took issue with the screen shots, finding them "to be isolated screen shots that do not provide factual evidence of the claimed invention."

The Board disagreed, and found that "the probative weight of the declarations and exhibits together, in their entirety, show Applicant's completion of an online testing system public operating online." The Board further noted that an Applicant is not always required to show reduction to practice of every claim limitation:

In Spiller, the court determined a Rule 131 declaration showing possession of the “basic invention,” or the “heart of the invention,” or “establish[ing] broadly possession of the invention,” can be adequate to antedate a prior art reference even if what is shown in the Rule 131 declaration does not include all of the limitations of the later-claimed invention. Id. As such, we find that Appellant has sufficiently demonstrated a reduction to practice through declarations and exhibits showing possession of the “basic invention” or the “heart of the invention.” Specifically, Appellant has shown news publication, promotional materials, and screen shots which show an online testing center (FF 1-1), adding new or editing existing test questions (FF 7-1), a fee for the test-taker (FF 11-1), revenue sharing (FF 5-2, 8-1), and private user accounts (FF 2-1, 3-2, 9-1). Additionally, the exhibits show, and declarations support facts clearly describing, a webpage which Appellant declares was online and available before November 16, 1998 depicting an online testing site depicting icons allowing a user to at least “take a test” and “create a test,” and go to their “account” and/or “private account” (FF 4-2, 4-3), which we find substantially support the broad limitations as claimed by Appellant. Thus,Appellant has shown a reduction to practice of his basic invention, which showing will also suffice as to claims differing therefrom only in details which are obvious to one of ordinary skill in the art. See In re Spiller 500 F.2d at 1178. 

My two cents: If you're preparing a swear-behind declaration and don't have a lot of experience in this area, do yourself a favor and read Ex parte Test.com, and maybe even review the actual declaration and exhibits on PAIR.

Seems to me the clear danger in submitting a swear-behind that shows the "heart of the invention" rather than every limitation is that relying on In re Spiller also means you're admitting that the difference between what you showed and what you claim is obvious. So you get rid of one reference, but if the Examiner finds another teaching only the elements you relied on in your declaration, he has a good single-reference obviousness rejection, right? Because you've admitted the missing elements are obvious. Perhaps this is less dangerous in a reexam context, because maybe you can assume the reference asserted is the best one?

Due diligence in swear-behind declarations (Part III)

My previous posts (Part I and Part II) on § 1.131 (swear-behind) practice explained that the BPAI expects a swear-behind declaration to contain facts and supporting exhibits, not conclusory statements, to properly shows reduction to practice. The cases discussed in this post show that the same is true for a showing of due diligence.

Ex parte Kirkwood:

The declaration relies on events which were documented in an Invention Disclosure. See Oct. 20, 1995 Declaration, paragraphs 4 & 5. However, the Invention Disclosure itself is not provided as an exhibit. The declarants state that one of the inventors discussed the “invention” with scientists on or about February 10, 1987. Declarants further allege that the inventors worked “as time and budget allowed throughout February and early March” until completion of the experiments described in Exhibit 1 of their previous declaration. Id. at paragraph 6. These statements alone do not establish due diligence from a time prior to March 2, 1987 until the alleged actual reduction to practice on March 6, 1987. Appellants must state with particularity and provide evidence of the sequence of events which occurred from a specified time prior to March 2 until the actual reduction to practice on March 6. See generally, In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970).

So Kirkwood's declaration failed because it characterized the inventor's activities ("inventors worked 'as time an budget allowed'") rather than stating specifically what activities occurred and when. And, of course, supporting evidence should have been attached to the declaration.

The BPAI made similar remarks in Ex parte Igelmund:

The Folise and Igelmund declarations provide absolutely no explanation of the appellant's activities with regard to the invention set forth in claims 1, 2 and 15 to support the appellant's assertion of diligence. In particular, the statement in paragraph 4 of the Igelmund declaration that the declarant “worked diligently with Mr. Folise's office in preparing a patent application on the invention” is merely conclusory in nature and fails to indicate (1) the actions that were taken by the declarant toward either reducing the invention to practice in the form of a prototype or preparing a patent application and (2) the dates on which those actions were taken.

These cases show that stating the legal conclusion of "diligence" is not enough. Nor is it sufficient to state in the declaration that the time period was "reasonable."

While we agree with counsel's statement that, in many circumstances, “[i]t is not unreasonable to expect the preparation of a patent application to take the interval from December 2, 1994 until March 6, 1995” (Br18), since the delay is over three months, a declaration of counsel would normally be expected setting forth dates establishing progress towards filing. 
(Ex parte Peppel.)

Here, Appellants' declarations and Brief fail to explain diligence in any way, merely asserting that the time periods in question are “reasonable” (supra). Without some explanation as to what the declaration does or does not show, Appellants do not persuade us that the declaration demonstrates diligence over the period from December 20, 2001 through June 25, 2002.
(Ex parte Flynn.)

Periods of inactivity in the critical time period are not fatal. The Applicant may instead provide a "valid excuse" for the gap. As explained by the Board in Ex parte Peppel, "the record has to show the required diligence or valid excuses for a lapse. (See Griffith v. Kanamaru, 816 F.2d 624, 625-26, 2 USPQ2d 1361, 1362 (Fed. Cir. 1987) which explores diligence in reduction to practice in the context of certain allowable excuses, such as vacations.)"

While gaps are not fatal, they do weigh against diligence:

While Appellants need only show reasonable diligence, and do not have to show work toward a constructive reduction to practice 24 hours a day, 7 days a week, time not accounted for during the period for diligence weighs against a successful showing of diligence.
(Ex parte Flynn.)

Finally, there is no per se rule for how big of a gap in activity is permissible. A few BPAI cases do say "a 2-day period lacking diligent activity has been held to be fatal," citing as authority In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983). But I find that characterization of Mulder to be misleading.

In Mulder, the date of conception was only two days before the effective date of the reference. The Applicant argued that since the time period was so short, the diligence threshold should be reduced. The Federal Circuit disagreed, holding that “[L]iberality cannot be extended to the point of eliminating all proof of diligence, no matter how short the period to be covered.” In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). I think this quote is a better summary of the holding of Mulder, rather than "a 2-day period lacking diligent activity has been held to be fatal."

Case law on swear-behind declarations (Part II)

This is Part II in a series explaining what the BPAI considers to be a sufficient § 1.131 (swear behind) declaration. Part I (here) explained that to show actual reduction or conception, a § 1.131 declaration should tie the supporting documents to the claims. The BPAI decisions covered in Part I offered only general guidance on how to do this. Today I'll examine some decisions that are more helpful in explaining where the Applicant went wrong.

The general rule is that the evidence must show either conception of, or actual reduction to practice of, the claimed invention.

Actual reduction to practice requires proof of a physical embodiment or performance of a process that includes all limitations of the claims. See UMC Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987)
Conception is “the formation, in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is to be thereafter to be applied in practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).  

More specifically: 

Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice "amounts essentially to mere pleading, unsupported by proof or a showing of facts" and, thus, does not satisfy the requirements of  37 CFR 1.131(b). In re Borkowski, 505 F.2d 713 (CCPA 1974). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. 505 F.2d at 718-19.

The Board has consistently read In re Borkowski to require a mapping between the exhibits and the claims.

In Ex parte Mittleman, the Board criticized the insufficient declaration in some detail. The claims at issue were directed to a towable piece of luggage with an inventive handle. In addition to the handle, the claims also recited “a piece of baggage” and “at least one wheel connected to the piece of baggage, said wheel having a wheel rotation axis.” The exhibits to the declaration included CAD drawings and photographs of the handle. The Board explained that the declaration was insufficient because the claimed baggage and wheel were not in the drawings or in the photograph.

The Board then explained that simply providing drawings and/or photographs that included the claimed features is not enough, because the Appellants must also provide a mapping between information in the exhibits and claim limitations.

Even were we to accept as true that the computer-aided rendering accurately corresponds to every feature of the handle prototype, this statement fails to map the information in the affidavits to the claim limitations. In particular, not every feature of the prototype described by the named inventors is labeled in the computer-aided rendering. For example, the computer-aided rendering does not have the following items labeled so that they correspond to the description of the handle prototype: the handle, the handle grip, the hollow stem, or the intermediate member (Facts 15.d, 15.h). Further, neither the description of the prototype, nor the labels on the computer-aided rendering correspond to every limitation of the claims. For example, neither the prototype description nor the computer-aided rendering identify a telescoping arm portion such as recited in independent claim 1. Like the appellants in Borkowski, Appellants here have not sufficiently explained the contents of the exhibits. More specifically, Appellants have not mapped the features of the handle prototype to the claim limitations. Absent a clear explanation, Appellants’ affidavits are of little assistance in enabling us to determine if there had been an actual reduction to practice.
(Ex parte Mittleman.)

In Ex parte Draper, the Board noted the absence of a mapping between the declaration and the claims:

Here, Appellant provides no discussion in the Declaration explaining how the “LinkFinder.h” header file2 shown in Exhibit A describes the claimed invention. (FF 3). We find the submitted Exhibit A comment description merely reveals the declaration for a “ClinkFinder” class that processes a data stream against a set of parsing rules that further calls a specified “ClinkProcessor” to process each link identified by the parsing rules. (Declaration, Exhibit A, page 1) (FF 4). Therefore, we find Appellant’s proffered Exhibit A source code merely shows possession of the recited “parsing [of] one or more data objects of the data structure,” in the context of finding links. (Claim 1). In particular, we find Appellant’s Declaration does not show or explain how the “object access interface” recited in claim 1 has been reduced to practice. Likewise, we find Appellant’s Declaration fails to show or explain how the data elements that are identified and combined to “obtain one or more hyperlink addresses” have been reduced to practice. (See claim 1).

Additional guidance for the proper contents of a swear-behind can be found in decisions in which the Board found that the declaration was sufficient to prove conception. Some of these decisions specifically note a correspondence between the claims and the relied-upon documents.

For example, in Ex parte Cafar, the Examiner found the declaration ineffective to show conception because one of the claims included "a flat straightener," yet the drawings submitted with the declaration did not illustrate this feature. The Board disagreed, stating that "[e]ach limitation of claim 5 is described in the invention disclosure, including an express statement of a 'flat straightener'."
However, other Board decisions involve a declaration which does not specifically tie the disclosure to specific claim elements, yet the Board nonetheless approved of the swear-behind. In some of them, the Board made a (conclusory) finding of fact that the declaration and/or documents do establish conception. (Ex parte McDysan, the 37-page invention disclosure document was found to be "a description of Appellants’ invention as set forth in the subject application"; Ex parte Li, the 20-page invention disclosure document "established proof of conception."

In at least one decision where the approved-of declaration did not mention claim elements (Ex parte Cho), the Board reviewed the disclosure and made significant findings of fact on the record. The disclosure described the invention as follows: “[b]y adding multiple, repeating, numbers as a memory location for phone/pager numbers, users can easily associate someone’s numbers (office, home, cell, pager, etc.) into one set of memory locations (i.e. 5, 55, 555, 5555, etc.)” The declaration in Cho merely stated that the "claimed subject matter of the referenced patent application was the subject of a written disclosure [attached]." The Board nonetheless found that the declaration was sufficient to show conception because the subject matter of certain claims was "at least reasonably suggested in [the disclosure document]. Specifically, the invention disclosure document discusses storing various numbers—namely a cell phone number, a home number, an office number, and a pager number—to distinct memory locations (FF 9-10). These stored numbers, in our view, reasonably support the broader recitation of stored information or addresses."

Other Board decisions emphasize the importance of clearly explaining which facts are relied on for reduction, conception, and/or diligence. In Ex parte O'Connell, the Board noted that "[a]t best, Appellants’ Declaration evidences a 'conception' date of the invention prior to Li’s effective date. However, Appellants have not provided any evidence to support the due diligence requirement." And in Ex parte Vo, the Board chastised the Applicant for a confusing declaration that did not properly distinguish between reduction, conception and diligence:

The Rule 131 Declaration does not explainwhether Appellant is asserting (1) a reduction to practice prior to the effective date of the reference to be antedated and/or (2) conception of the invention prior to that date coupled with the requsite diligence. Instead, the Rule 131 Declaration asserts that Appellant “made the invention described and claimed in [Appellant’s] application prior to April 26, 2001." ...
Because the Rule 131 Declaration, e-mails, and letter fail to assert that the claimed method was performed prior to the [relevant date] as required to establish an actual reduction to practice prior to that date, the Examiner was correct to consider whether the evidence instead establishes conception prior to that date coupled with the requisite diligence. ...
[However, ] Appellant makes only the following arguments, which are germane to conception rather than diligence. (Emphasis added.)

This concludes my discussion of what the BPAI requires to show either conception or actual reduction to practice in a § 1.131 declaration. Part III will discuss diligence, which is the second part of what's  required when you choose to show conception rather than actual reduction to practice.

Statistics on how often BPAI finds swear-behind declaration sufficient

Yesterday I mentioned a new post on PatentlyO discussing some pro's and cons of swear-behind practice. More relevant stuff at PatentlyO: a new post (here) with statistics showing how often BPAI finds swear-behind declaration sufficient. You should read the entire post, but here's the highlight:

BPAI rejected the attempt to antedate in 77% (56) of these decisions, accepted the attempt to antedate in 22% (16), and partially accepted and partially rejected the attempt to antedate in 1% (1).

With such long odds, should any practitioner even try a swear-behind?

I'll agree this looks discouraging at first glance. But I read quite a few decisions while doing research for my blog, and I found that a lot of swear-behinds were not just insufficient, they came nowhere close.

When I say "nowhere close", I'm talking about declarations that said "here's an invention disclosure form showing we invented before the reference date and here's a few emails between inventors and attorneys showing diligence". If you read the first post in my swear-behind series (here), you'll see that what's really required is an explanation of how the facts show reduction to practice and diligence, not just conclusory statements.

So until I know how many of the 77% were declarations were full of conclusory statements, I won't interpret this statistic as "it's impossible to get a swear-behind accepted at the Board." Instead, I'll say "don't take your case to the Board unless your swear-behind meets the requirements set out by the case law."

Pro's and cons of swear-behind declarations

Recently I began a series about swear-behind declarations. (First post is here.) My series of posts will focus on how to draft a swear-behind that the BPAI finds sufficient, in terms of explaining how the facts show reduction to practice and/or diligence, rather than making conclusory statements.

A new post (here) at Patently-O discusses the pro's and cons of swear-behind declarations. The new post is the fifth in a series discussing the results of a practitioner survey about the use of swear-behind declarations. Lots of interesting statistics about how often swear-behinds are used, and in what technologies.

Swear-behind declarations (Part I)

Takeaway: BPAI case law shows that a declaration simply stating that the invention was conceived or reduced to practice is not enough for a § 1.131 (swear-behind) declaration, even when coupled with exhibits. The declaration should explain how the attested facts show actual reduction to practice, and/or conception plus diligence, of the the claimed invention.

This is the first in a series of posts explaining what makes a sufficient § 1.131 declaration. Though I'm using BPAI cases to examine the issue, courts handle the analysis in the same way. In fact, the BPAI usually cites to Federal Circuit cases on this subject. So this information should be helpful in drafting swear-behind declarations that stand up in litigation.

I'll start with actual reduction and conception, then later I'll cover diligence. Today's post provides an overview of cases in which the § 1.131 declaration was found insufficient to antedate a reference.

Most of the decisions which find a declaration to be insufficient criticize the Applicant for not tying the swear-behind declaration to specific claim elements. It seems clear that a conclusory statement along the lines of "the exhibits show that the claimed invention was conceived before the critical date" is not enough.

Ex parte Sagar: The criticism in Sagar is typical:

[T]he Declaration does not address the limitations of the claims. Likewise, the evidence filed along with the Declaration does not address the limitation of the claims. It is not clear what features the “invention” referred to in the Declaration and evidence includes. As such the Declaration and evidence does not establish possession of every feature recited in the claim.
(Emphasis added.)

Ex parte Molander: The declaration stated that conception was evidenced by an invention disclosure "which describes the invention described and claimed in the subject application." The Board found the declaration insufficient because it "does not explain how Exhibit A, which is an Invention Disclosure Form, proves conception of each claim limitation."

Ex parte Draper: The declaration stated that the inventor "conceived of a system including each of the elements of my currently-pending claims." The Board found that the declaration insufficient because it "does not state what was done and how it relates to the claim elements. The declaration does not state with any specificity what was conceived or what was reduced to practice and how."

Ex parte Daniels: The Board characterized the sworn statement that the claimed invention was actually reduced to practice as a "bald assertion" and further noted that:

[T]he Appellants failed to point to the specific information [in the project planning and design documents] on which they rely to establish conception. Neither the '131 affidavit nor the arguments in the Brief establish facts sufficient to tie the information found in the charts and diagrams of the project documents to the claim limitations ... As such, the attached project documents are of little assistance in enabling the Patent Office to judge whether there was conception of the invention prior to the effective date of the prior art ... (Emphasis added.)

In at least one case (Ex parte Sharma), the declaration did not tie the disclosure to the claim language, but the Board nonetheless examined the supporting documents and performed some significant fact finding. In Sharma, the Board concluded that the declaration did not show conception because the supporting document (an invention disclosure) was missing eight claim limitations.

And in another decision (Ex parte NTP) the Board criticized the Applicant for too much information because this resulted in a confusing declaration. The declaration purported to be an element-by-element analysis, but the Board found this to be a "scavenger hunt":

NTP does not directly identify and explain the evidence which would show the conception and/or reduction to practice of the particular claim element. Indeed, NTP does not even separately address conception and actual reduction to practice. Rather it directs us to its proposed findings of fact, designated by “DF,” which in turn directs us to its exhibits and/or other proposed facts. The exhibits often direct us to still other exhibits. We are left to sort through NTP’s submissions to figure out the relevance of the documents and testimony. (Emphasis added.)

These BPAI decisions offer only general guidance about how to tie the supporting documents to the claims. The next post in this series will examine a few decisions that are more helpful in explaining where the Applicant went wrong.