“Attorney Arguments” Not Accepted as Evidence When Evaluating a §102(e) Anticipation Patent Rejection – Florida Patent Lawyer Blog

Written by Mark Terry   

Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant’s attorney’s arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something. 

At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection, the Appellant’s attorney, from the firm of Oblon Spivak, provided one particular argument, among many, about what a claim term meant to one of ordinary skill in the art. The attorney’s particular argument did not include any references to the specification, the cited references, or any textbooks or authoritative works. Also, no §1.132 declaration was provided. This is what the BPAI had to say about this particular argument: The Appellant’s argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Ouch! to the layperson, this may seem lightly worded – but to an avid reader of BPAI decisions, this is considered a smack down. Now for the educational moment: When making statements about a person of ordinary skill in the art (POSITA), it helps to refer to an authority about what is considered known to a POSITA. You can refer to your own specification, the cited references, other patents in the same area from the same time, textbooks, science/engineering treatises, etc. Also, you can use a §1.132 declaration from your inventor or someone else in the field, IF their credentials are impressive enough to be considered a POSITA. Karen Hazzah has a great blog entry about the use of §1.132 declarations. And the best part of using these authorities, is that the Examiner must rebut this evidence. I wrote a blog entry recently about the Examiner’s duty to respond to the evidence you’ve provided. He can’t just dismiss it, he must consider it, rebut it with evidence of his own and provide substantive reasoning as to why your evidence does not overcome the rejection.


We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.

Call Now: 786.443.7720