Wednesday, May 15, 2013

Invention disclosure forms as evidence discussed in Ex parte Kang

The appellant lost in Ex parte Kang. After dealing with some procedural irregularities as to the Advisory Action, the Board made some significant comments about the use of invention disclosure forms as evidence.

As to the Advisory Action:

The Final Office Action, from which this appeal is taken, included a
rejection of claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 112,
second paragraph, as being indefinite based on an ambiguity identified by
the Examiner as being in the language of claim 1. Fin. Off. Act. dated Feb.
17, 2010 at p. 2. Appellants submitted an after final amendment to correct
the noted ambiguity. Amdt. After Final dated Apr. 5, 2010. The Examiner
entered the after-final amendment, but did not state in the Advisory Action
whether the rejection for indefiniteness had been overcome
. Adv. Act. dated
Apr. 16, 2010. In the Answer, the Examiner explicitly withdrew the
rejection of claims 1, 7, and 13 under 35 U.S.C. § 112, second paragraph,
stating that “the after final amendment was entered because it was agreed
that the 112 second paragraph rejection was overcome.” Ans. 3, 11-12.
While the Examiner did not explicitly withdraw the indefiniteness rejection
of claims 3, 5, 8, 9, 11, 14, 15, and 17, since the basis for the indefiniteness
rejection was noted in the record as having been overcome by the
amendment entered after-final, we understand there to be no outstanding
rejection of any of the pending claims under 35 U.S.C. § 112, second
paragraph. Id. at 3-4.4

Footnote 4:
The Examiner alludes to a new ground of rejection of claims 5, 8, 11, 14,
and 17 under 35 U.S.C. § 112, second paragraph, in the Response to
Arguments portion of the Answer (Ans. 12), but we see no presentation of
any such rejection under the New Grounds of Rejection portion of the

A topic which arises is evidence in the form of a "patent disclosure form" (known by some as an invention disclosure form):

The 131 Declaration, signed by the Appellants, attaches an exhibit
that consists of a copy of a redacted Patent Disclosure Form. 131
Declaration, para. 2. The 131 Declaration states that Appellants “have seen
the unredacted Patent Disclosure Form which indicates at 1.(a) a conceived
and 1.(b) a built/tested date before May 6, 2004.” Id. at para. 3. The 131
Declaration also states that Appellants “did simulate a system incorporating
the invention as described in the Patent Disclosure Form as indicated at
1.(b), at before May 6, 2004.” Id. at para. 4. The Patent Disclosure Form
consists of a questionnaire completed by Appellants that asks at 1.(a) when
Appellants conceived the invention and at 1.(b) whether the invention has
been successfully built or tested. Id. at Ex. A. Appellants checked “Yes”
on this form that the invention had been successfully built or tested, and
noted that it was by “[d]igital simulation and anlytical [sic] approach.” Id.
The Patent Disclosure Form also includes a seven page description entitled,
“System ID Based Air Filter Alarm Technique.” Id. The 131 Declaration
does not specifically point to descriptions or data within this seven page
document accompanying the Patent Disclosure Form to show evidence of
conception or reduction to practice of the control of claim 7 or the method of
claim 13. For example, the 131 Declaration does not explain where the
Patent Disclosure Form specifically evidences conception or reduction to
practice of changing a first variable “periodically.”

Rather, the 131 Declaration consists of vague and general statements
in the broadest terms as to what the Patent Disclosure Form shows along
with an assertion that the Patent Disclosure Form indicates conceived and
reduction to practice dates prior to May 6, 2004. These statements amount
essentially to mere pleading, unsupported by proof or showing of facts.
re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920
(CCPA 1964). The 131 Declaration does not adequately explain what facts
or data Appellants are relying upon to show a completion of their invention
prior to the critical date. See Borkowski, 505 F.2d at 718.

The Patent Disclosure Form is not clear on its face and it is
Appellants’ burden to explain the content of this Patent Disclosure Form as
proof of acts amounting to reduction to practice. Id. at 719. Absent a clear
explanation pointing out exactly what facts are established in the Patent
Disclosure form and relied on by Appellants, the 131 Declaration based
thereon is of little assistance in enabling us to judge whether there was an
actual reduction to practice of the invention. Id. Rule 131 requires “not a
statement that facts exist” but an “oath to facts showing a completion of the
invention” and “[t]he showing of facts shall be such, in character and
weight, as to establish reduction to practice, etc.” In re Harry, 333 F.2d at
922 (internal quotations omitted). Appellants’ 131 declaration merely
asserts that facts exist but does not indicate what those facts are or how they
occurred. Id.

Further, Appellants have failed to point to the specific information in
the attached Patent Disclosure Form on which they rely to show conception
of the invention. Neither the 131 Declaration nor the arguments in the
Appeal Brief establish facts sufficient to tie the information found in the
Patent Disclosure Form to the claim limitations in a manner to show
conception of even the basic invention. As such, the attached Patent
Disclosure Form is of little assistance in enabling the Office to judge
whether there was conception of the invention and reduction to practice prior
to the effective date of the prior art.

Even if one were to find that the 131 Declaration provides sufficient
evidence of a simulation of the control, Appellants have not met their burden
to show the specifics of that simulation in sufficient detail to establish that
the simulation conditions were sufficiently similar to those of the intended
environment to evidence that the invention actually works for its intended
purpose. “[P]roof of actual reduction to practice requires a showing that ‘the
embodiment relied upon as evidence of priority actually worked for its
intended purpose.’” DSL Dynamic Sciences Ltd. v. Union Switch & Signal,
Inc., 928 F.2d 1122, 1125 (Fed. Cir. 1991), quoting Newkirk v. Lulejian, 825
F.2d 1581, 1582 (Fed. Cir. 1987). “On the other hand, tests performed
outside the intended environment can be sufficient to show reduction to
practice if the testing conditions are sufficiently similar to those of the
intended environment.” Id. at 1125. For these reasons, we agree with the
Examiner that the 131 Declaration is insufficient to remove Kang as a
reference. As such, we turn to the substance of the rejection.

KSR is cited:

This explanation provided
by the Examiner is based on rational underpinnings. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).

have not asserted or provided evidence to show that application of Nair’s
filter condition technique to a heat pump system such as the system of Gay
would have been beyond the level of skill of one of ordinary skill in the art.

In re Lovin is cited:

Rather, Appellants’ argument amounts to a recitation of
the claim elements and a “naked assertion” that the elements are not found in
the prior art. Such statements do not constitute a separate argument for
patentability of claim 11 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). As such, claim 11 falls with claim 7.


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