Written by Mark Terry 

Last week’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Byers discredited a flawed 1.132 Affidavit presented by the Applicant and affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Byers decision interesting because it showed a common pitfall when using 1.132 Affidavits.

The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner’s prima facie case of obviousness. Specifically, the Board stated: “the conclusory statements in the Declaration are merely factual representations of his opinions.”

The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)(“[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”) cf. Ashland Oil, Inc. v. Delta Resins & Refactories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)(“Opinion testimonytestimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.” (citations omitted)). Although there is “no reason why opinion evidence relating to a fact issue should not be considered by an examiner,” In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996). The Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations. See Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294. In re American Academy of Science, 367 F.3d 1359, 1368 (Fed. Cir. 2004).

The lesson here is simple. The focus of a 1.132 Affidavit should not be opinion. It should be a recitation of the facts. Let the Examiner and the Board reach its own conclusion based on the facts recited in the 1.132 Affidavit. Otherwise, the affidavit will look like a paid endorsement of the Applicant’s arguments, and it won’t be given much weight.