Recently, we discussed the use of declaration evidence to advance prosecution in patent reexamination, and selecting declarants where concurrent litigation exists together with patent reexamination. In this post we explore a type of declaration commonly encountered in patent reexamination, declarations that attempt to identify objective evidence of non-obviousness.
MPEP 716.01(a) lists several categories of evidence that may tend to refute an obviousness determination.
–Evidence of criticality or unexpected results
–Evidence of commercial success
–Long-felt but unsolved needs
–Failure of others
–Skepticism of experts
As amendment of claims is not practical in many instances during patent reexamination (i.e., intervening rights), declaration evidence is much more common in patent reexamination as compared to patent application prosecution. Yet, the submission of objective evidence of non-obviousness is often undermined by a chronic failure to persuasively connect this evidence to the claims. Deficient submissions typically fall into two main categories:
1. Declarations providing general sales revenue; or
2. Declarations identifying licensing revenue.
Submission of declaration evidence along the two general lines above is often times irrelevant to the claimed subject matter. In other words, to be considered persuasive, the examiner must identify a nexus between the merits of the claimed invention and the evidence of secondary considerations. The term “nexus” identifies a factually and legally sufficient connectionbetween the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness.
Unfortunately, declaration evidence lacking such a nexus is, as demonstrated by recent events, quite common.
In ex parte Fellowes (BPAI 2010-001690), a Compact Disc printing insert of a particular configuration (score lines and folds) was at issue. In rejecting the Patent Holder’s showing of objective evidence of non-obviousness, the Board provided a comprehensive review of case law in this area, ultimately concludng:
In sum, Appellant neither provides a sufficient nexus between a licensing agreement or other commercial factors and the products sold, nor shows that the products sold are commensurate in scope with any particular argued claim. On balance, Appellant’s arguments and evidence do not outweigh the Examiner’s demonstration of obviousness based on a mere substitution of one standard type of audio and/or digital media case label insert for another similar standard type and one known type of fold line or line of weakness for another, all well-known in the industry, as described supra. (emphasis added) Ex ParteSaint-Gobain Plastics Corp. (BPAI 2009-004255) is another recent BPAI case with a similar outcome.
Indeed, in the predictable arts, assembly of persuasive secondary consideration evidence is quite challenging, even for well known products like Tivo. In the Tivo patent reexamination (90/009,329, time warp feature) the secondary evidence was also rejected as lacking a nexus to the claims at issue (See Final Action in Tivo’s patent reexamination, pages 12-13). Going forward, I would expect significant additional evidence to be submitted to connect the Tivo claims undergoing patent reexamination to the evidence of record.
On the other hand, objective evidence of non-obviousness is an easier sell in the unpredictable arts. For example, such evidence can be quite persuasive in relation to patents covering very well known products that significantly changed, or even created markets of their own (i.e., Viagra, Plavix, Singulair).
Regardless of the inventive art, a persuasive submission of objective inidica of non-obviousness depends on the relation of that evidence to a demonstrated “nexus” of the claim features.