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

Thu Jan 11 18:39:28 EST 2024

Thanks David!

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From: Patentcenter [mailto:patentcenter-bounces at oppedahl-lists.com] On Behalf Of David Boundy via Patentcenter
Sent: Thursday, January 11, 2024 3:33 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>; Andrew Berks <andrew at berksiplaw.com>
Subject: Re: [Patentcenter] Declarations under 37 CFR 1.130 to Overcome 35 USC 102(a) rejections

Oh.  Here's my longer essay on declarations/affidavits.

A "declaration" is a statement opining to facts that ends with a penalty-of-perjury or 18 U.S.C. § 1001 paragraph.  An "affidavit" is that plus a notarized signature.

The dominant concern in declarations/affidavits, overshadowing and governing everything else, is inequitable conduct.  The Federal Circuit has zero tolerance for error in declarations/affidavits--if something is provably wrong, then the Federal Circuit all but says that both materiality and intent are established.  So if you are thinking about a declaration/affidavit, the first thing you must do is choose a path that guarantees zero risk of error, no matter what you don't know.

If you were ever an engineer for Boeing, or if you were a compiler writer, or had some similar engineering role where small errors have outsize costs, you have the mindset and developed some techniques to ensure zero-defect engineering.  You have to think the same way here.

  *   Be sure you're spot on with the specific fact to hit the examiner's ground -- never use a declaration/affidavit to opine on something that's a millimeter off hitting the exact, smallest, most-precise nail exactly on the head.  All declarations/affidavits are risky.  An declaration/affidavit that addresses the wrong point, or that misses the right point by a millimeter is risk with no return.  An declaration/affidavit has to inflict a mortal wound via a single thrust of a short, sharp stilletto into a vital organ , not 1000 hacks with a machete.
  *   You can only use an declaration/affidavit for issues of FACT, not issues of LAW.
  *   (Almost) never use an declaration/affidavit where attorney argument is legally sufficient (unless you have an examiner that is totally dug in to a factual error and doesn't understand the concept of "burden of proof" and you don't want to appeal).  Attorney argument won't get you in inequitable conduct trouble.
  *   Declarations/affidavits are especially warranted on issues where you have the burden of proof, and rarely worth the risk on issues where you don't.
  *   Declarations/affidavits can be useful to say "Examiner Jones's Action states x.  Examiner Jones is wrong." If you don't have the burden of proof, your affiant doesn't have to opine on the true fact, only explain falsity of the examiner's.  Especially if the burden of proof is in your favor, if you have an declaration/affidavit to say the examiner is wrong, then your attorney argument controls the field.
  *   Choose wisely whether a declaration/affidavit is or is not the right tool -- not every fact is suitable for treatment by declaration/affidavit.  Some are very low risk, some are very high.

•      Declarations/affidavits are generally safe on issues where the examiner has all the same information the declarant has.  The danger with a declaration/affidavit is where there's some possibility that during discovery some doc will show up that contradicts the declaration.

•       An expert's opinion on the ordinary usage of terms of art is low risk.

•       An expert's opinion on the interpretation of an ambiguity in a technical document is low risk.

•      An affidavit interpreting some other evidence, where all the relevant information is there on the face of the page, and the question is what it means, is almost always safe -- your affiant can't be accused of hiding or distorting, just offering an opinion.

•       An affidavit that opines that something didn't happen, and there's a micro-chance that, in discovery, some document will show that it actually did, is a high-risk affidavit.    eSpeed, Inc. v. BrokerTec USA, LLC, 480 F. 3d 1129 (Fed. CIr. 2007)   https://scholar.google.com/scholar_case?case=11175138575348740529

•         An affidavit on a fact where there might be a contradictory document that comes out in discovery is extremely dangerous.

  *   Choose an affiant with first-hand knowledge -- NEVER rely on one affiant to report knowledge of some other person.  See eSpeed.
  *   Proceed with great respect and fear of your own fallibility, and things you might not know.

Then the content of the affidavit (See 16/278,112 Reply of June 16, 2023, Exhibits A and B starting at pages 19 and 26. for examples):

  *   Establish expertise or basis to testify.
  *   If there's a milligram of potential conflict of interest, disclose it.
  *   Be 1000% accurate.  Affidavit error very quickly becomes affidavit fraud, and that makes the whole patent family unenforceable.
  *   State enough basis (hard to give guidelines), and not one word more.  Know who has the burden of proof on that fact, and say enough, and then stop.  What you don't say is as important as what you do.  Often, the point is "Examiner Jones is wrong" and you don't have to say very much about what's right.  Usually, the less you say the better.
  *   Word the statement using the relevant standard of proof.  For example, if your affidavit is directed to an examiner's misreading of a claim, you have to address "broadest reasonable interpretation:" "In my opinion, Examiner Jones' interpretation is not just wrong, it it entirely unreasonable." or "In my opinion, no person [in my field] would reasonably understand the language as Examiner Jones posits."  If you are opining on the Wands factors for enablement, use the very words of those factors, and walk through them one by one.
  *   If something is the affiant's opinion, state it as "my opinion" -- subjective opinion is unassailable fact, even if the opinion turns out to be wrong!
  *   Nail the fact you need to nail.  No dancing around it.   Many patent attorneys, when confronting a plain old error by an examiner, dive deep into non-confrontational, deferential language.  NOT HERE.  In most cases, the purpose of an affidavit is to rebut an examiner's mistake.  Use a hard-edged word in a short sentence that leaves no wiggle room: "in my opinion, Examiner Jones is wrong."  Not "Few people would agree with Examiner Jones."
  *   Close with the section 1001 paragraph.

If you do a google search, you'll find good articles.  E.g. https://www.foley.com/en/insights/publications/2018/01/three-things-to-know-about-rule-130-declarations and https://www.aipla.org/docs/default-source/committee-documents/bcp-files/bcp-130-declarations_kfonda.pdf?sfvrsn=7eea5de_2

Examples:

  *   09/611,548, January 25, 2018 (understanding of terms to one of ordinary skill)
  *   11/024,729, November 16, 2008 (definitions, interpretation of a reference)
  *   15/068,899, June 7, 2022 (enablement)
  *   16/658,072, November 8, 2021 (obviousness secondary indicia)
  *   16/278,112 Reply of June 16, 2023, Exhibits A and B starting at pages 19 and 26 (ordinary meaning of claim terms, interpretation of references)

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

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