[Patentcenter] Declarations under 37 CFR 1.130 to Overcome 35 USC 102(a) rejections

[David Boundy]

 Look at 16/278,112 Reply of June 16, 2023, Exhibits A and B starting at
pages 19 and 26.   These are 103, but they're issues you could use for 102
as well (ordinary meaning of claim terms, interpretation of references).

A "declaration" has a penalty-of-perjury paragraph.  An affidavit has that,
plus notarized signature.

A declaration/affidavit is only good on an issue of *fact*, not an issue of
*law*, so be sure you're carefully targeting an affidavitable issue.

Some issues are really easy and safe to affidavit, some are *really*
dangerous.  In general, the safe ones are where the examiner has all the
same information the declarant has.  The danger with a declarations is
where there's some possibility that during discovery some doc will show up
that contradicts the declaration.   Then you are s-c-r-e-w-e-d.

Be sure the affiant is testifying from first hand knowledge.  A case I was
peripherally involved with *eSpeed, Inc. v. Brokertec USA, LLC*, 480 F 3d
1129 (Fed. Cir. 2007)
https://scholar.google.com/scholar_case?case=11175138575348740529 -- the
dopey patent attorney got an affidavit from the inventor/CEO on an issue
where the real knowledge resided with the company's software engineers.
Lots of bad things happened -- the CEO didn't get the facts exactly right,
it turned into a waiver of privilege, etc etc.  Don't do that.  Only get
declarations on *first* hand personal knowledge.

If a declarant is testifying as an expert, couch everything as "in my
opinion."  Opinions are unassailable facts.   No lawyer can get inside your
declarant's head to disprove that that was the declarant's opinion on the
day the declaration was signed.

If you keep these messages somewhere, search for "espeed brokertec"   It's
my favorite case to illustrate the "don't do's" for declarations, so I cite
it every time I write this essay.   You may find an old copy of this essay
with one or two more tips.

On Thu, Jan 11, 2024 at 5:42 PM Andrew Berks via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> If anyone has filed a declaration under 37 CFR 1.130 to overcome a
> rejection under 35 USC §102(a)(1) or §102(a)(2) (or has seen such a
> declaration) (see also MPEP 2152.06), please send me a serial no. that I
> can pull from Patent Center.
>
> Thanks
>
>
> Andrew Berks, Ph.D., J.D. | Partner
>
> Patent Attorney and IP Licensing
>
> FRESH IP PLC
>
> 28 Liberty St 6th Fl
>
> New York NY 10005 (US)
>
> Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
> e: andrew at freship.com | w: www.freship.com berksiplaw.com
>
> Direct: +1-845-558-7245
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
>
> --
> Patentcenter mailing list
> Patentcenter at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
>


-- 


<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20240111/de636f22/attachment.htm>