USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105

As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered persuasive, the examiner must be able to 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 connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. In the vast majority of cases involving such evidence, the required nexus is deemed insufficient.

Yesterday, a typical rejection of such evidence was once again demonstrated by the BPAI in Ex Parte Smiths Interconnect Microwave Components. Inc. Interestingly, the Patentee argued that a nexus was demonstrated as the sales figures provided related to the product described in their patent. In rejecting this nexus, the BPAI relied on Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI 1990). The Board explained the holding of Remark as clarifying that [i]n civil litigation, once a prima facie nexus is demonstrated the burden switches to the opposing party to show that commercial success was due to extraneous reasons, while in ex parte proceedings the USPTO lacks the evidentiary means to show that commercial success is due to reasons other than the merits of the claimed invention.

Yet, the above noted case predates the enactment of 37 CFR § 1.105. Rule 105 provides the very evidentiary means to explore deficiencies in submitted declarations.

Rule 105, clearly applies to patent reexamination.

(1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter . . .

Further Rule 105 provides that factual information may be requested, specifically:

(3) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:

(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.

Although Rule 105 was not in effect at the time of the case law relied upon by the Office (MPEP 2145; 716.03), the USPTO has been empowered to gather factual evidence via Rule 105 since September 2000. See AlsoStar Fruits S.N.C. and Institute of Experimental Botany v. United States and Department of Commerce 393 F.3d 1277 (Fed. Cir. 2005) (finding that a rule 105 request embraces a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability. So long as the request from the examiner for information is not arbitrary or capricious, the applicant must comply with the request).

It may be that the BPAI would be better served leveraging Rule 105 as a tool to fully assess such evidence rather than rely on seemingly outdated case law justifications. Certainly, waiting until the appeal decision to identify such a deficiency seems unfair as it is too late for the Patentee to address via a supplemental showing.

Finally, the inability to address deficiencies in such evidence until the record is closed may encourage further district court actions against the USPTO, such as the Regents of the University of California case discussed last week.