# Presentation: 659466

## 37 CFR § 1.132 Practice

- 	**  ****GENERAL INTRODUCTION**

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## Objectives

- To become familiar with 37 CFR 1.132 and why it is used by applicants.
- To understand the conditions under which 37 CFR 1.132 may be used.
- To recognize the various types of declarations that may be filed under 37 CFR 1.132.

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**Notes:**
This training focuses on declarations which are filed to overcome rejection under 35 USC 103.  In light of the Supreme Court decision in KSR v Teleflex, it is anticipated that there will be an increase in such submissions as a means for overcoming rejections based on obviousness.

## Topics to be Covered

- What is 37 CFR 1.132?
- Overview and Formalities
- Types of Declarations under 37 CFR 1.132

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## 37 CFR 1.132

**“****When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.”**
- 	“Affidavit” and “declaration” are used interchangeably in this presentation.
- The rule permits applicants to provide evidence to overcome a ground of rejection or an objection.
- Anyone may make a declaration under 37 CFR 1.132
- e.g., applicant, applicant’s co-worker, independent expert, or others. No special qualifications required.

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**Notes:**
All affidavits and declarations presented which do not fall within or under specific rules are to be treated or considered as falling under this rule.  See MPEP 716.

Applicant may submit affidavits or declarations under 37 CFR 1.132 for the purpose of traversing grounds of rejection.   Note that the showing must be  responsive to the rejection and present sufficient facts to overcome the rejection.  

## Burden Shifts to Applicant

- Once the examiner has established a *prima facie *case of obviousness, the burden shifts to the applicant to show nonobviousness by presenting evidence of secondary considerations.

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**Notes:**
The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir.1993), cert. denied, 127 L. Ed. 232 (1994). However, where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive.

## Examples of Types of Declarations under 37 CFR 1.132

- Unexpected results – MPEP 716.02(a)-(g)
- Commercial Success – MPEP 716.03(a)-(b)
- Long-Felt Need and Failure of Others – MPEP 716.04
- Inoperability of References – MPEP 716.07
- Skepticism of Experts – MPEP 716.05
- Copying – MPEP 716.06

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##  Timeliness

- A declaration under 37 CFR 1.132 is timely filed if received:
- Prior to a final rejection
- Before appeal in a case with no final rejection
- After final rejection but before or on the same date of filing an appeal (37 CFR 1.116(e))
- Applicant must provide a showing of good and sufficient reasons why the declaration or other evidence is necessary and was not earlier presented
- After appeal, but prior to filing of an appeal brief, if compliant with 37 CFR 41.33(d)
- With a properly filed RCE under 37 CFR 1.114
- See MPEP 716.01, Section A.

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**Notes:**
An examiner’s denial of entry of a declaration under 37 CFR 1.132 is petitionable under 37 CFR 1.181 (and not appealable).  The petition is decided by the TC Director or the appropriate management official on behalf of the TC Director.

## Declarations Must  Be Addressed In The Next Office Action

- If the evidence is insufficient to overcome the rejection, the examiner must clearly and specifically explain why the evidence is insufficient.  See MPEP 716.01,
- 	section B.
- e.g., “The declaration under 37 CFR 1.132 filed May 1, 2007, is insufficient to overcome the rejection under 35 U.S.C. 103(a) of claims 1-5 based upon the Smith reference because . . .” (explain why the evidence presented was not persuasive).
- General statements such as “the declaration lacks technical validity” or “ the evidence is not commensurate in scope with the claims” without an explanation supporting such findings are unacceptable.

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**Notes:**
It is the responsibility of the primary examiner to personally review and decide whether affidavits or declarations submitted under 37 CFR 1.132 for the purpose of traversing grounds of rejection are responsive to the rejection and present sufficient facts to overcome the rejection.  (MPEP 716, emphasis added)

## Declarations Must  Be Addressed In The Next Office Action (cont’d)

- If the evidence is sufficient to overcome the rejection, the comments should be consistent with the guidelines for reasons for allowance provided in MPEP 1302.14.
- e.g., “The declaration under 37 CFR 1.132 filed May 1, 2007, is sufficient to overcome the rejection of claims 1-5 under 35 U.S.C. 103 based upon the Smith reference because . . .” (provide reasons).
- Form Paragraphs 7.65, 7.66 and any of form paragraphs 7.66.01 through 7.66.05, may be used as appropriate.

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## Declarations Must  Be Addressed In The Next Office Action (cont’d)

- If the examiner is not considering the declaration on the merits, the examiner must provide a clear explanation of the reason.
- e.g., “The declaration under 37 CFR 1.132 filed May 1, 2007, is not timely because . . .” (provide reasons).
- 	*“**When an applicant puts forth relevant rebuttal evidence . . . the Board must consider such evidence . . .  That is not to suggest that the Board’s finding of obviousness must be overturned in light of the evidence; rather, the Board must give the declarations meaningful consideration before arriving at its conclusion.” **In re Sullivan, *2007 U.S. App. 20600* *(August 29, 2007).
*  *

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**Notes:**
“Evidence rising out of the so-called secondary considerations must always when present be considered en route to a determination of obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,1538, 218 USPQ 871, 879 (Fed. Cir. 1983)  [Emphasis added]

## Analysis of Declarations under 37 CFR 1.132 

- To be of probative value, objective evidence must be **factually** supported by an appropriate declaration.  See MPEP 716.01(c).
- Arguments of counsel cannot take the place of evidence in the record.  See *In re Schulze, *346 F.2d 500, 602, 145 USPQ 716, 718 (CCPA 1965).
- Attorney statements regarding, e.g. unexpected results, commercial success, long-felt need, inoperability of the prior art, skepticism of experts, and copying are not evidence without a supporting declaration.

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**Notes:**
The examiner must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims.  See In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986).  See also MPEP 716.01(a).

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Declarations may include statements in the form of:
- Evidence of a fact – comparative test results, sales figures
- An opinion – statement expressing what the declarant thinks, believes, or infers with regard to certain facts.
- An allegation – a totally unsupported or uncorroborated statement; e.g., conclusory statements unsupported by factual evidence

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## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Weight to be afforded:
- Evidence of a fact – weight is governed by relevance
- Opinion – weight is influenced by the underlying basis
- Allegation – not entitled to any weight

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**Notes:**
This is further developed in the slides that follow.

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Examples of types of evidence:
- Comparative test data are used to show unexpected results
- Sales figures are used to show commercial success
- Articles, publications, declarations by one of ordinary skill are used to show long-felt need
- Comparative test data and declarations by one of ordinary skill are used to show inoperability of a reference

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## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Factual evidence is preferable to opinion testimony.
- 	See MPEP 716.01(c), Section III.
- Declarant should lay out facts, supported by evidence.
- Expert opinion supported by documentary evidence may be given weight.  See *In re Carroll*, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979).
- Opinion on the ultimate legal conclusion at issue is not entitled to any weight, although the underlying basis for the opinion may be given some weight.  See *In re Chilowsky, *306 F.2d 908, 134 USPQ 515 (CCPA 1962).
- Any interest of the expert in the outcome of the case should be taken into consideration.

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**Notes:**
In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, “some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him.” 385 F.2d at 456, 155 USPQ at 524 (emphasis added))

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

-   To be of probative value, evidence of secondary considerations must be related to the claimed invention.  See MPEP 716.01(b).
-   The examiner must determine whether there is a **nexus** between the invention **as claimed **and the evidence of secondary considerations.
**“****Nexus” **designates a legally and factually sufficient connection between the **claimed invention** and the objective evidence of nonobviousness such that the evidence should be considered in the determination of nonobviousness. See *Demaco Corp. v. Von Langsdorff Licensing Ltd., *851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).

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## Analysis of Declarations Under 37 CFR 1.132 – The Last Step

- The ultimate determination of patentability must be based on consideration of **the entire record** by a preponderance of the evidence.  See *In re Oetiker*, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).  See also MPEP 716.01(d).
- In other words, an examiner should reject a claim if, in view of the prior art and and any secondary evidence of record, it is “more likely than not” that the claim is unpatentable.

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**Notes:**
Each piece of rebuttal evidence should not be evaluated for its ability to “knock down” the prima facie case.  All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case.  See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).

## Analysis of Declarations Under 37 CFR 1.132 – The Last Step (cont’d)

- The submission of objective evidence of patentability **does not mandate** a conclusion of patentability.  See *In re Payne, 606* F.2d 303, 203 USPQ 245 (CCPA 1979).
- A strong case of obviousness may be established such that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness.  See MPEP 716.01(d).
- See MPEP 2145 for guidance in determining whether rebuttal evidence is sufficient to overcome a *prima facie *case of obviousness.

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## Review

- 	Review of the examiner’s decision that the declaration under 37 CFR 1.132 does not overcome a rejection is _by appeal_ to the Board.

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## 1.  Unexpected Results

- Any differences between the claimed invention and the prior art may be expected to result in some differences in properties.  The issue is whether the properties differ to such an extent that the difference is **really unexpected**.  See MPEP 716.02.
- Evidence of unexpected results is frequently in the form of a **direct comparison** of the claimed invention **with the closest prior art** which is **commensurate in scope with the claims**.
- 	See, e.g., *In re Boesch*, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).

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**Notes:**
An indirect comparison of the claimed invention with the closest prior art may also be made.  See MPEP 716.02(b), Section III.

A prima facie case of obviousness may be rebutted by evidence establishing that applicant’s invention produces unexpected results.  See MPEP 716.02.

A rejection under 35 U.S.C. 102 cannot be overcome by a declaration attempting to establish unexpected results.  A showing of unexpected results is only relevant to a rejection based upon obviousness under 35 U.S.C. 103.  See In re Malagari, 499 F.2d 1297, 182 USPQ 549 (CCPA 1974).

## 1.  Unexpected Results (cont’d)

- The declaration should include:
- A description of precisely what was tested.  It must include **both:**
- The invention ***as claimed, ***AND
- The closest prior art
- A description of all of the test conditions.
- Test results.  The results must include **both:**
- The results of the test performed on the invention as claimed, AND
- The results of the test performed on the closest prior art
- An analysis of the test results.

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**Notes:**
“Applicant has the burden of explaining the data in any declaration they offer as evidence of nonobviousness.” Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. of Pat. App. & Inter. 1992.)

## 1.  Unexpected Results (cont’d)

- The comparison must be under the identical conditions except for the novel features of the invention.
- Precisely what was done should be recited in the declaration.  The actual steps carried out, the materials employed, and the results obtained should be spelled out.  Nothing concerning the work relied upon should be left to conjecture.
- Conclusory statements such as “the prior art invention did not perform well” without a showing of the actual results of the test performed on the prior art AND on the claimed invention is insufficient.

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## 1.  Unexpected Results (cont’d)

- The claimed invention must be compared with the closest subject matter that *exists* in the prior art. See MPEP 716.02(e).
- Applicant cannot be required to compare the claimed invention with an invention suggested by a combination of references relied upon by the examiner in a 103 rejection. This would be “requiring comparison of the results of the invention with the results of the invention.”  *In re Chapman, *357 F.2d 418, 148 USPQ 711 (CCPA 1966).
- The claimed invention may be compared with prior art that is closer than that applied by the examiner. See *In re Holladay*, 584 F.2d 384, 199 USPQ 5416 (CCPA 1978).

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**Notes:**
For example:  Assume that the closest prior art is the Smith reference, and that the examiner cannot apply a 102(b) rejection based on Smith because Smith fails to disclose one of the claimed limitations.  The Jones reference teaches the missing limitation. The examiner applies a rejection of the claims under 35 U.S.C. 103(a) over Smith in view of Jones, which establishes a prima facie case of obviousness.  To rebut the prima facie case of obviousness, the applicant is required to compare the claimed invention with only the Smith reference.  Applicant is NOT required to compare the claimed invention with an invention (e.g., a product, device, or process) suggested by the combination of Smith in view of Jones, since this would be comparing applicant’s invention against itself.  (If the closest prior art reference taught all of the features of the claimed invention, the reference should be applied in a rejection under 35 USC 102(b) and any evidence of secondary considerations, such as unexpected results, would be irrrelevant.)  

Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provided the same information as to the other.  In re Johnson, 747 F.2d 1456, 223 USPQ 1260 (Fed. Cir. 1984).  An applicant does not have to test all the compounds taught by each reference, however, where an applicant tests less than all cited compounds, the test must be sufficient to permit a conclusion respecting the relative effectiveness of applicant’s claimed compounds and the compounds of the closest prior art.  Id. (quoting In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). 

## 1.  Unexpected Results (cont’d)

- The showing of unexpected results must be commensurate in scope with the invention** as claimed.**  See MPEP 716.02(d).
- The results must be due to the ***claimed**** *features, not to ***unclaimed*** features.
- The examiner must also consider whether there are features which are included in the tests reported in the declaration which are not in the claims.

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**Notes:**
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.  In re Clemens, 622 F.2d 1029, 206 USPQ 289 (CCPA 1980), In re Peterson, 315 F.2d 1325, 56 USPQ2d 1379 (Fed. Cir. 2003).

The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof.  In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979).

To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.  In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).

## 1.  Unexpected Results (cont’d)

- The unexpected property or result _must actually be unexpected_ and of statistical and practical significance. See MPEP 716.02(a).
- Synergism is merely a property like any other property – it may be expected or unexpected depending on the particular art.
- The _burden is on the applicant_ to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b).  See also *Ex parte Gelles*, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992).

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**Notes:**
A greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected.  Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage.  See MPEP 716.02(a), Section I.  See also Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991).

The absence of a property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness.  See Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter 1985).

Evidence that a compound is unexpectedly superior in one of a spectrum of properties disclosed by the prior art can be enough to rebut a prima facie case of obviousness.  No set number of examples of superiority is required.  See In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). See MPEP 716.02(a), Section II. 

## 1.  Unexpected Results (cont’d)

- The specification does not need to teach superiority over the prior art, or the advantage of having or using a feature.
- The feature or property in which the superiority or advantage resides must be disclosed, or must inherently flow from the disclosure.
- The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical.  *In re Saunders, *444 F.2d 599, 170 USPQ 213 (CCPA 1971).
- 	See MPEP 716.02(f).

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**Notes:**
Evidence and arguments directed to advantages, which are not disclosed in the specification, of a claimed feature of a device that is disclosed in the specification cannot be disregarded. See In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Applicant presented evidence that the use of a claimed feature of the device is not a matter of design choice as argued by the examiner.) 

See In re Slocombe, 510 F.2d 1398, 184 USPQ 740 (CCPA 1975). “There is no requirement that superiority over prior art be disclosed in the application; it is enough if the basic property or utility in which the advantage resides is disclosed.” 

See In re Zenitz, 333 F.2d 924, 142 USPQ 158 (CCPA 1964).  Evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as a tranquilizer.  See also Ex parte Sasajima, 212 USPQ 103 (Bd. App. 1981).  

## 2.  Commercial Success

- In a declaration of commercial success, the declarant attempts to show that the claimed invention has broad acceptance in the marketplace, which is used as evidence of nonobviousness.
- The key is to show that the success is linked to the claimed invention and not to some extraneous factor.

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**Notes:**
The slides which follow expand on this theme.

## 2.  Commercial Success (cont’d)

- The declaration should include at least:
- A description of what was sold.
- It must include the features of invention ***as claimed.***
- A description of the relevant market for the product.
- _Sales results_.  The results should include evidence of market share such as**:**
- Total sales for competing products in the market
- Indicate differences between these products and the applicant’s
- Total sales for products embodying the invention
-  Pricing of the various products.
-  Information on advertising within the relevant market.
-  Any other information relevant to the inquiry.

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**Notes:**
Note that the “total sales” can be used for computing market share.  

## 2.  Commercial Success

- The declaration must establish a **nexus** between the claimed features of the invention and the commercial success.  See MPEP 716.03(a).
- The commercial success must be due to the ***claimed*** features, and not due to ***unclaimed*** features.  For example, evidence showing commercial success of “cups” is not commensurate in scope with claims directed to “containers” broadly.
- Merely showing that there was commercial success of an article which embodied the invention is not sufficient.  *Ex parte Remark*, 15 USPQ2d 1498 (Bd. Pat. App. & Inter. 1990).

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**Notes:**
Generally speaking, if the claims recite a device having features A, B, C, and D, applicant must show that the commercial success was achieved by selling the device having features A, B, C and D, (and not just A, B, and C.)

“Where . . . the claims are directed to a combination of ranges and procedures not shown by the prior art, and where substantial commercial success is achieved at an apparently typical point within those ranges, and the affidavits definitely indicate that operation throughout the claimed ranges approximates that at the particular points involved in the commercial operation, we think the evidence as to commercial success is persuasive.”  In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184 (CCPA 1958).

## 2.  Commercial Success (cont’d)

- The examiner should determine that the commercial success is not derived from other factors (see MPEP 716.03(b)),  for example:
- heavy promotion or advertising, or position as market leader before the introduction of the patented product.  See *Pentec, Inc. v. Graphic Controls Corp.,* 776 F.2d 309, 227 USPQ 766 (Fed. Cir 1985).
- brand name recognition
- recent changes in related technology or consumer demand.  See *In re Fielder*, 471 F.2d 690, 176 USPQ 300 (CCPA 1973).
- consumption by purchasers normally tied to applicant or assignee

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**Notes:**
Evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits.  EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985).

Compare Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of advertising did not show absence of a nexus between commercial success and the merits of the claimed invention because spending 25-35% of sales on marketing was not inordinate (mature companies spent 17-32% of sales in this market) and advertising served primarily to make industry aware of the product because this is not kind of merchandise that can be sold by advertising hyperbole.)

In design cases, establishing a nexus between commercial success and the claimed invention is especially difficult.  The evidence must clearly be attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor.  Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1997).

## 2.  Commercial Success (cont’d)

- Gross sales figures do not show commercial success absent evidence as to market share.  *Cable Electric Products, Inc. v. Genmark, Inc*., 770 F.2d 1025, 226 USPQ 881 (Fed. Cir. 1985)
- Inventor’s opinion as to the purchaser’s reason for buying the product, alone, is insufficient to demonstrate a nexus between the sales and the claimed invention.  *In re Huang, *100 F.3d 135, 40 USPQ 2d 1685 (Fed. Cir. 1996)

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## 3.  Long-Felt Need and Failure of Others

- A successful showing of long-felt need should include evidence of **three factors**:
- The need must have been a persistent one that was recognized by those of ordinary skill in the art.  See *In re Gershon, 372 F.2d 535, 152 USPQ 602 (CCPA 1967).*
- The long-felt need must not have been satisfied by another before the invention by applicant.  See *Newell Companies v. Kenney Mfg. Co, *864 F.2d 757, 9 USPQ2d 1417 (Fed. Cir. 1988).
- The invention must in fact satisfy the long-felt need.  See *In re Cavanagh, *436 F.2d 491, 168 USPQ 466 (CCPA 1971).
- See MPEP 716.04

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## 3.  Long-Felt Need and Failure of Others (cont’d)

- Applicant’s claim that the problem was “first recognized” by him contradicts a showing of long-felt need.
- “Since the alleged problem . . . was first recognized by appellants, and others have not yet become aware of its existence, . . . there could not possibly be any evidence of either a long felt need in the  . . . art for a solution to a problem of dubious existence or failure of others . . . to solve a problem of which they were not aware.” *In re Gershon, *372 F.2d 535, 152 USPQ 602 (CCPA 1967).
- The evidence must show unsuccessful efforts to solve the problem.
- See *Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., *707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result, there was no evidence of any prior unsuccessful attempts to do so.)

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**Notes:**
The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention’s potential or marketability rather than want of technical know how.  Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).

Presence of legislative regulations for controlling sulfur dioxide emissions did not militate against existence of long-flet need to reduce the sulfur content in the air.  Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 218 USPQ 865 (Fed.Cir. 1983).

Fact that affidavit supporting contention of fulfillment of long-felt need was sworn by a licensee adds to the weight to be accorded the affidavit, as long as there is a bona fide licensing agreement entered into at arm’s length.  In re Tiffin, 443 F.2d 344, 170n USPQ 88 (CCPA 1971)

Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references.  Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 26 USPQ2d 1018, (Fed. Cir. 1993). 

## 3.  Long-Felt Need and Failure of Others (cont’d)

- The existence of a prior art reference showing a solution to the problem is evidence that there is no long-felt need.
- Evidence of persistent need may be a series of patents or publications showing the problem to be solved and a solution which declarant claims is inoperable.

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## 4.  Inoperability of References

- Every patent is presumed to be valid and operable. Allegations that a U.S. patent is inoperative should be treated with **considerable skepticism**. See MPEP 716.07.
- The declaration must show that the steps a person of ordinary skill would take in attempting to achieve the claimed results would not result in an operative invention.
- If a desired result is not immediately obtained, a skilled worker would make certain adaptations. The failures of experimenters who have no interest in succeeding should not be accorded great weight.  See *in re Michalek, *162 F.2d 229, 74 USPQ 107 (CCPA 1947).

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**Notes:**
Examiners should not express opinions on the operablility of a patent.  Applicants may attempt to rebut a rejection by saying that the reference relied upon by the examiner is inoperative.

The relevant teachings of the reference must actually be inoperative.

A mere showing that it is possible to operate within the reference disclosure without obtaining the alleged product does not overcome the presumption that a process will produce the product described therein.  See In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969).

Declarations must rebut the presumption of operability by a preponderance of the evidence.  In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).

## 4.  Inoperability of References (cont’d)

- Where a declaration asserts inoperability in features of the reference that are not relied upon, **the reference is still effective as to other features which are operative.** See *In re Shephard, *172 F.2d 560, 80 USPQ 495 (CCPA 1949).
- Applicant’s claims must distinguish from the alleged inoperative disclosure.  See *In re Crosby*, 157 F.2d 198, 71 USPQ 73 (CCPA 1946).
- If a patent teaches the claimed invention, a declaration by patentee that he did not intend the disclosed invention to be used as claimed by applicant is immaterial.  See *In re Pio, *217 F.2d 956, 104 USPQ 177 (CCPA 1954).

- 132 Declarations

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**Notes:**
For example, if the reference teaches several embodiments or features, one of which is shown to be inoperable, and if the examiner is not relying on the inoperable embodiment or feature to teach the claimed invention, the declaration does not overcome the presumption of operability because the other embodiments or features are operable.  The reference is still effective as to the other embodiments or features.  

Compare In re Yale, 434 F.2d 66, 168 USPQ 46 (CCPA 1970) (Correspondence from a co-author of a literature article confirming that the article misidentified a compound through a typographical error that would have been obvious to one of ordinary skill in the art was persuasive evidence that the erroneously typed compound was not put in the possession of the public.)  

## 5.  Skepticism of Experts

- “Expressions of disbelief by experts constitute strong evidence of nonobviousness.”  *Environmental Designs, Ltd. v. Union Oil Co. of Cal., *713 F.2d 693 218 USPQ 865 (Fed.Cir. 1983).
- “The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the claimed invention.”  *In re Dow Chemical Co., *837 F.2d 469, 5 USPQ 2d 1529 (Fed.Cir. 1988).
- 	See MPEP 716.05.

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## 6.  Copying 

- The declaration must show more than the mere fact of copying. The examiner should determine that the copying is not attributable to other factors such as:
- lack of concern for patent property
- contempt for patentees ability to enforce patent
- 	See *Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).*
- Evidence of copying was persuasive when alleged infringer tried for a substantial length of time to design a product similar to the claimed invention, but failed and then copied the invention instead.  See *Dow Chemical Co. v. American Cyanamid Co., *837 F.2d 459, 2 USPQ2d 1350 (Fed. Cir. 1987).
- 	See MPEP 716.06.

- 132 Declarations

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**Notes:**
To show copying, one must show:
  That applicant had invented prior to the copying
B)  That the alleged copier had access to the invention (or description thereof)

In other words, evidence must show that accused copier derived knowledge of the invention from applicant, either directly or indirectly.

## Reminder 

- The weight given to a declaration also depends on whether it presents allegations, opinions or facts.
- The weight to be given declarations is a **judgment call** based on the particular facts of the case.

- 132 Declarations

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## 
Thank you

***Thank you***

- 132 Declarations

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