Rule 132 Declarations and Unexpected Results

1. Rule 132 Declarationsand Unexpected Results Richard E. Schafer Administrative Patent Judge Board of Patent Appeals and Interferences

2. Starting PointYou are faced with a prima facie case of obviousness • Prima facie case means that viewing only the references and the claimed subject matter, it appears the references may be combined and the conclusion of obviousness is reasonable • Also means that the applicant has the burden of presenting evidence demonstrating that the claimed invention has unexpected results • You have chosen to take on this burden

3. What are you going to do?

4. Create Evidence for submission to the PTO making comparisons with the prior art

5. “The” most important case • Refac International Ltd. v. Lotus Development Corp., 38 USPQ 2d 1665 (Fed. Cir. 1996)

6. “In light of the previous rejection of the [inventor's] affidavit as "self serving," [the inventors] knew that a reasonable Examiner reviewing the Affidavits would conclude that the affiants were disinterested witnesses with no knowledge of the patent process, particularly where the affiants in great detail presented their education and employment history without mention the affiant's connections to the patent applicants or familiarity with the patent invention. Conversely [the inventors] also knew that the PTO Examiner would, when evaluating the Affidavits, consider it important to know whether the disinterested affiants had prior exposure to the patent process or its commercial Program.”

7. “We agree with the following statement made by the Patent Office Committee on Enrollment and Disbarment that considered this case: ‘By reason of the nature of an application for patent, the relationship of attorneys to the Patent Office requires the highest degree of candor and good faith. In its relation to applicants, the Office . . . must rely upon their integrity and deal with them in a spirit of trust and confidence . . . .’ It was the Commissioner, not the courts, that Congress made primarily responsible for protecting the public from the evil consequences that might result if practitioners should betray their high trust.” Kingsland v. Dorsey, 338 U.S. 318, 319-20 (1949)

8. ABA Model Rule 3.3(d)Candor Toward the Tribunal (d) In an ex parte proceeding, a lawyer shall inform the tribunal of all material facts known to the lawyer that will enable the tribunal to make an informed decision, whether or not the facts are adverse.

9. The Duty of Candor and Unexpected Results Declarations • The declaration must be what you expressly or implicitly represent it to be • You must accurately report test results including any unfavorable results • Submit objective evidence from a trusted source

10. Back to creating unexpected results evidence • Things to keep in mind

11. Applicant bears the burden of persuasion in responding to a prima facie case

12. Unexpected Results • Results which would be viewed as surprisingly better or superior by a person of ordinary skill in the art • That which is surprising to one having ordinary skill in the art is not predictable nor obvious • Merely superior or better is not enough – must be surprisingly or unexpectedly better • Proof of synergy does not necessarily prove unexpected results • Synergy– a property which may be unexpected or not based on the particular facts

13. Unexpected results is a factual inquiry • Mere argument or conclusory statements by the attorney or a declarant are insufficient to satisfy the applicant’s burden • Unexpected results findings by the board are reviewed on appeal using the substantial evidence standard

14. All timely unexpected results evidence must be considered by the examiner

15. Proving results are unexpected • The Applicant’s burden is usually satisfied by tests or other data showing improved results compared with the prior art along with declaration testimony that the results are unexpected • An objective showing of improved results coupled with attorney argument that the results are unexpected is not ordinarily sufficient

16. Some guidelines when preparing unexpected results declarations

17. Not applicable to § 102 rejections

18. Results must be factual and not merely based on inferences or speculation from the references

19. Unexpected results do not have to be claimed to be relevant to patentability

20. Unexpected Results must have a foundation in applicant’s specification • The specification must establish that the property is relevant to the invention • In re Chu, 36 USPQ2d 1089 (Fed. Cir. 1995) • “We have found no cases supporting the position that a patent applicant’s evidence and/or arguments traversing a Section 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give and take of ex parte patent prosecution.”

21. Apparently contrary precedent • In re Wertheim, 191 USPQ 90 (CCPA 1976) • In re Slocombe, 184 USPQ 740 (CCPA 1975) • In re Davies, 177 USPQ 381 (CCPA 1973)

22. Rationale supporting the necessity of a foundation for unexpected results • Unexpected results are part of the invention as a whole • If the result is not disclosed in at least a general way or inherently disclosed in the specification, why should the applicant given the filing date for the invention?

23. Comparisons should be “side-by-side” • I.e., Everything should be identical except for the novel features of the invention • Any other differences must be sufficiently explained demonstrating that the other differences are not responsible for the results

24. Unexpected results do not have to be demonstrated for all the invention’s properties or possible uses • However, the duty of candor may require that you also disclose any tests or information showing results for some properties are inferior to or only as good as the prior art

25. Declarations Should Present a Comparison With the Closest Prior Art • The closest prior art is typically the single reference which shares the most features in common with the invention • This may not be the art cited by the examiner • You need not provide a comparison of the invention with the “primary reference” as modified by secondary references

26. The unexpected property or result must actually be unexpected • Expected results are an indicia of obviousness • The examiner may cite additional prior art to show that the results in the declaration are expected • Synergism is merely a property like any other property - it may be expected or unexpected depending on the particular facts

27. The scope of the showing must be commensurate with the scope of the claimed subject matter • The showing must be representative of the full scope of the claimed subject matter • Unexpected results as to a single species or single embodiment within the scope of a broad claim may not be sufficient • A showing of unexpected results as to the subject matter of a dependent claim may not be sufficient to overcome a rejection of the independent claim • Results should not be based upon limitations not required by the claims