use of rule 132 declarations - napp patent prosecution... · 2018-02-14 · use of rule 132...

Use of Rule 132 Declarations

Kerry Culpepper Culpepper IP, PLLC

[email protected]

July 2016

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

I. Lecture Objective

• The objective of this lecture is to

familiarize you with use of declarations per

37 CFR 1.132 during prosecution.


II. Rule 132 Declaration

• Some of the uses of declarations under 37 CFR

1.132 (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)


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 716.01(c) (II)


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


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)


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


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.


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.


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.


Digital Tourniquet

• Applicant argued re 103(a) rejection that

Dyer was nonanalogous art.

• In support of this argument, Applicant

submitted a rule 132 decl.


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.


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


Introduce Declarant (background)


Introduce Declarant (education)


Introduce Declarant (work history)

Copyright 2013 PPC IP, PLLC 17

Factual Basis for opinion


Declarant’s Opinion

19

Opinion re Nonanalagous


132 Declaration Discussion

• Paragraphs 6-10 and 12-13 support

argument that Dyer is a nonanalogous

reference.


Opinion re safe pressure


132 Declaration Discussion

• Paragraphs 9-11 support argument that

Dyer does not disclose limitation of

“providing a safe occlusive pressure.”.


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)


Thank You!


use of rule 132 declarations - napp patent prosecution... · 2018-02-14 · use of rule 132...

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