In re Meyer Denies Late 1.131 Declaration Evidence

Due to the limited prosecution window in patent reexamination compared to regular patent application prosecution, submission of declaration evidence under 37 CFR § 1.131 and/or 37 CFR § 1.132 is far more commonplace. (See some of my June 2010 posts for further discussions on declaration practice).

U.S. Patent 5,501,404 is directed to a manure spreader (who knew one needed anything more than a blog for that). The ‘404 Patent is the subject of ex parte patent reexamination 90/010,007. There were two main disputes during the reexamination prosecution, (1) whether or not a parent of the ‘404 Patent supported an amendment introduced during the reexamination for priority purposes, or, alternatively (2) whether the Patentee could “swear behind” intervening prior art from the date of the CIP application underlying the ‘404 Patent (which included support for this claim feature).

In pursuing issue (2) before the USPTO, the Patentee failed to present antedating declaration evidence under 37 CFR § 1.131 until after final rejection. An Advisory Action issued indicating that the declaration evidence had been entered, but explained that it was deficient with respect to the required diligence showing. Days prior to filing the Notice of Appeal to the BPAI, supplemental declaration evidence was filed. This evidence was not entered – – on appeal the examiner’s rejections were affirmed by the BPAI. The refusal to enter the supplemental declaration evidence was explained by the Board as a petitionable issue, that was within the discretion of the examiner.

The Patentee then pursued their case to the CAFC.

The appeal, In re Meyer Manufacturing Corp., was affirmed last week at the CAFC.

In arguing issue (1) before both the BPAI and CAFC, the Patentee took the odd position that the amended feature would have been obvious in view of the parent disclosure. Of course, possession of a claimed invention in a 112 sense is not a question of obviousness. Thus, this argument was summarily rejected in both appeals.

As to the second issue (2) the Patentee explained that the very same claim feature was introduced by amendment during prosecution of the priority application (Parent of ‘404 Patent). When the examiner in charge of the parent application found support for this feature lacking, the CIP application underlying the ‘404 Patent was filed. The Patentee reasoned that since this attempted amendment predated the prior art of record in the patent reexamination, that the earlier conception of this feature was clearly demonstrated. However, the initial declaration evidence did not provide an adequate accounting of diligence. To account for this deficiency, the Patentee argued that the failure to enter the supplemental declaration filings was an error.

With respect to the non-entry of the supplemental declaration evidence, the court explained:

There are a host of various kinds of decisions an examiner makes in the examination proceeding–mostly matters of a discretionary, procedural or nonsubstantive nature–which have not been and are not now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. (citing In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002))

Had the Patentee properly petitioned under 37 CFR § 1.181, it seems very likely that the petition evidence would have been entered. This is because the filing of this supplemental evidence was responsive to the examiner’s perceived deficiencies in the original evidence. Moreover, the Patentee could have sought continued reexamination on the basis that full consideration of the supplemental evidence would lead to termination of the patent reexamination. Instead, based upon the Patentee’s failure to appreciate patent reexamination procedural intricacies, this patent will now fall.