In last week’s discussion on the topic of declaration usage in patent reexamination, we explained the benefit of such evidence in close cases, illustrated by both the dissent and majority comments on the limited evidence of record in ex parte Rehrig Pacific Company
Several days after the Rehrig Pacific decision, the BPAI once again emphasized the importance of such evidence. On May 28, 2010, in inter partes reexamination 95/000,008 (Shimano v. Rolf Dietrich BPAI 2010-001847), the Board analyzed the issue of written support relative to newly claimed static tension ranges of a bicycle rim. With regard to the new limitation, explicit support did not exist in the specification, but the Patentee argued that one of skill in the art would nevertheless recognize such disclosure as provided in the specification. In rejecting this argument, the Board explained:
Appellant did not provide evidence, such as expert testimony, to establish which of the values would have been recognized by the skilled worker as the lower limit for the claimed wheel spoke having nine or fewer pairs of spokes. Rather, only attorney argument was presented. Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). (emphasis added)
Clearly, as the USPTO utilizes the preponderance of the evidence standard (Ethicon v Quigg) in assessing validity, Patentees are wise to dispute adverse conclusions of the Office with more than unsupported, attorney argument.