Use of Rule 132 Declarations

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1 Use of Rule 132 Declarations Kerry Culpepper Culpepper IP, PLLC July 2016

2 Outline I. Lecture Objectives II. Introduce Rule 132 Declaration A. Proving possession of invention i. Example 1 B. Evidence of non-obviousness i. Example 2 III. Key tips Copyright 2016 Culpepper IP, PLLC 2

3 I. Lecture Objective The objective of this lecture is to familiarize you with use of declarations per 37 CFR during prosecution. Copyright 2016 Culpepper IP, PLLC 3

4 II. Rule 132 Declaration Some of the uses of declarations under 37 CFR (rule 132 decl.) Provide evidence of Graham Factors (criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc.) to rebut an obviousness rejection (103). Provide evidence of utility or operativeness to overcome a lack of utility rejection (101). Provide evidence that the disclosure of an application is sufficient to one skilled in the art or applicant possession of invention (112) (Pre AIA) to show that the publication is not by an other per 102(e) Copyright 2016 Culpepper IP, PLLC 4

5 Why use Rule 132 declaration? Attorney arguments sometimes not sufficient Lawyer s arguments unsupported by factual evidence are entitled to little value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Attorney statements regarding unexpected results inoperability of the prior art must be supported by an appropriate declaration. MPEP (c) (II) Copyright 2016 Culpepper IP, PLLC 5

6 Timing Rule 132 decl. considered if submitted: (1) prior to final rejection; (2) before appeal in an application not having a final rejection; (3) after final rejection, but before or on the same date of filing an appeal, upon a showing of good case; and (4) after the prosecution is closed but with an RCE Copyright 2016 Culpepper IP, PLLC 6

7 Timing So, basically need to recognize need and submit a rule 132 decl. before final rejection if you want to avoid paying RCE fee. From my personal experience, examiners rarely enter a declaration after final rejection (even if they state in Advisory Action that it does not overcome the rejection and give detailed reason) Copyright 2016 Culpepper IP, PLLC 7

8 Key Ingredients 1) Disclose Bias (employed by Assignee or hired by Assignee) 2) Establish Qualifications (university education, work experience, publications, commendations) 3) Establish Factual Basis for Conclusion 4) State Conclusion Copyright 2016 Culpepper IP, PLLC 8

9 Example: Digital Tourniquet Single use disposable digital tourniquet includes a support body (20) having a cuff (30) capable of applying a safe occlusive pressure to the finger. Copyright 2016 Culpepper IP, PLLC 9

10 Digital Tourniquet Examiner used Dyer patent to reject claims under 35 U.S.C. 102(b) and 103(a). Dyer describes a cable or bundle tie assembly 10 for securing a cable 16 to support cable 18. Copyright 2016 Culpepper IP, PLLC 10

11 Digital Tourniquet Applicant argued re 102(b) rejection that Dyer did not disclose limitation of providing a safe occlusive pressure. In support of this argument, Applicant submitted a rule 132 decl. to try to prove that Dyer was not capable of providing a safe occlusive pressure. Copyright 2016 Culpepper IP, PLLC 11

12 Digital Tourniquet Applicant argued re 103(a) rejection that Dyer was nonanalogous art. In support of this argument, Applicant submitted a rule 132 decl. Copyright 2016 Culpepper IP, PLLC 12

13 Digital Tourniquet Legal Argument of Non-analogous art; In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. A reference is analogous if (1) it is in the same technical field as claimed invention; or (2) it is reasonably pertinent to the particular problem with which the invention is involved. Copyright 2016 Culpepper IP, PLLC 13

14 Digital Tourniquet rule 132 decl. of Zhongyu Rule 132 decl. usually includes: Introduction of declarant (educational background, work experience, published articles, etc.) Factual Basis for opinion Opinion Must include bias such as being employed by the assignee or paid by the assignee Copyright 2016 Culpepper IP, PLLC 14

15 Introduce Declarant (background) Copyright 2016 Culpepper IP, PLLC 15

16 Introduce Declarant (education) Copyright 2016 Culpepper IP, PLLC 16

17 Introduce Declarant (work history) Copyright 2013 PPC IP, PLLC 17

18 Factual Basis for opinion Copyright 2016 Culpepper IP, PLLC 18

19 Declarant s Opinion 19

20 Declarant s Opinion Copyright 2016 Culpepper IP, PLLC 20

21 Declarant s Opinion Copyright 2013 PPC IP, PLLC 21

22 Opinion re Nonanalagous Copyright 2013 PPC IP, PLLC 22

23 132 Declaration Discussion Paragraphs 6-10 and support argument that Dyer is a nonanalogous reference. Copyright 2016 Culpepper IP, PLLC 23

24 Opinion re safe pressure Copyright 2016 Culpepper IP, PLLC 24

25 132 Declaration Discussion Paragraphs 9-11 support argument that Dyer does not disclose limitation of providing a safe occlusive pressure.. Copyright 2016 Culpepper IP, PLLC 25

26 Key Tips Submit it before Final Rejection Try to recognize if the examiner is not going to be convinced by mere arguments (telephone interview may help) Try to recognize the cases that are going to go to appeal Remember declarant may be subject to subpoena or deposition Every word may be scrutinized Say to use as few words as possible to make the point Disclose all possible biases Consider including experiment/test results in Specification if you know the art is close so that you do not need 132 declaration. Inventors often have colleagues that are willing to provide at no charge (these are even better because they are third parties) Copyright 2016 Culpepper IP, PLLC 26

27 Thank You! Copyright 2016 Culpepper IP, PLLC 27

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