Getting "evidence" into the record

Started by khazzah, 01-27-15 at 07:07 PM

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khazzah

New thread inspired by a tangent in another thread, here:
http://www.intelproplaw.com/ip_forum/index.php/topic,27371.msg123418.html#msg123418

In that thread, we were discussing the use of dictionary definitions on appeal. Jim Ivey posited that the only way to get documentary evidence on the record was through an IDS (entered before Appeal). I countered by noting that Dictionary definitions were specifically allowed in Appeal Briefs as a result of Rule 41.30's own definition of the term "evidence" used elsewhere in Rule 41.

dablueman then added:
Quote from: dablueman on 01-27-15 at 02:19 AM
All other documentary evidence [other than dictionary definition] still has to be of record (e.g. art to explain how something works).

I'd like to call on the collective wisdom of this forum and open up this topic for discussion: mechanisms for getting evidence into the record, i.e., for consideration by the Examiner and the PTAB. Intertwined with this topic is Rule 56. Do mechanisms other than an IDS comply with the Rule 1.56 Duty of Disclosure? Are some types of evidence exempt from Rule 56?

An IDS is probably the most well-known mechanism for submitting documentary evidence. It has the added advantage of clearly complying with the Rule 56 duty of disclosure.

As noted in the other thread, the Appeal Rules do allow you to provide dictionary definitions in the Appeal Brief itself. Do you run afoul of Rule 56 if you choose this route?

What are some other non-IDS mechanisms that Applicants use to submit evidence?

The first that comes to mind is "expert" declarations under 1.132. You don't cite those in an IDS, you simply submit them.

Another is Appendices to a Response. I've provided both dictionary definitions and Wikipedia entries as an Appendix to a Response. I've seen other types of documents included as a Response Appendix, mostly excerpts from textbooks.
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

JimIvey

Quote from: khazzah on 01-27-15 at 07:07 PM
As noted in the other thread, the Appeal Rules do allow you to provide dictionary definitions in the Appeal Brief itself. Do you run afoul of Rule 56 if you choose this route?

I hadn't considered that.  An IDS is available for dictionary definitions in appeal briefs under 1.97(d).  Does failure to use the IDS as the mechanism imply an intent to deceive?  I'd find that hard to believe.  You're explicitly bringing the definition to the attention of the PTO.  How could that be considered to imply an intent to hide that information and keep it off the record?  I think it's worth noting that, while 1.56 does say that filing an IDS satisfies the duty to disclose, it doesn't say that no other mechanism of disclosure can satisfy the duty.

Secondly, I think it's unlikely that any dictionary definition would be "material" as defined by 1.56.  When I've wanted to cite a dictionary, it was to counter an examiner's broadest unreasonable interpretation of a claim term.  Accordingly, the dictionary definition doesn't make part of a prima facie grounds for rejection of a claim and isn't contrary to any argument I've made.  If information is not material, then 1.56 wouldn't govern its submission, right?

Quote from: khazzah on 01-27-15 at 07:07 PM
Another is Appendices to a Response. I've provided both dictionary definitions and Wikipedia entries as an Appendix to a Response. I've seen other types of documents included as a Response Appendix, mostly excerpts from textbooks.

That's how I think I'd do it, at least in briefs.

I've had examiners refuse to consider any evidence of any kind that wasn't cited in an IDS, except for declarations as you've noted.  However, 1.56 applies only to "material" information and, while providing one way to submit material information, doesn't say that IDSes are the exclusive means for submitting material information.  That seems to leave the door open for other ways to submit information to the PTO, especially non-material information such as helpful dictionary definitions.

Is it in the MPEP that examiners aren't required to consider any information except that cited in an IDS?  Maybe a reply appendix would suffice since the examiner is required to consider the reply itself.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

khazzah

Quote from: JimIvey on 01-27-15 at 08:21 PM
Quote from: khazzah on 01-27-15 at 07:07 PM
As noted in the other thread, the Appeal Rules do allow you to provide dictionary definitions in the Appeal Brief itself. Do you run afoul of Rule 56 if you choose this route?

I think it's worth noting that, while 1.56 does say that filing an IDS satisfies the duty to disclose, it doesn't say that no other mechanism of disclosure can satisfy the duty.

Agreed. And I think we discussed this very point in an old Rule 56 thread. Though as paranoid as attorneys are about Rule 56, who's brave enough to rely on that reasoning  :-)

Quote from: JimIvey on 01-27-15 at 08:21 PM
Secondly, I think it's unlikely that any dictionary definition would be "material" as defined by 1.56. f information is not material, then 1.56 wouldn't govern its submission, right?

I was hoping someone would bring that up.

Quote from: JimIvey on 01-27-15 at 08:21 PM
When I've wanted to cite a dictionary, it was to counter an examiner's broadest unreasonable interpretation of a claim term.  Accordingly, the dictionary definition a) doesn't make part of a prima facie grounds for rejection of a claim and b) isn't contrary to any argument I've made. 

Gotcha: rebuttal to the Examiner's position on BRI isn't "material".

Can we take this even further and say that information isn't material just because it touches on claim construction? I think we touched on this a long time ago, and at least some folks said claim construction is material.

Jim, can you clarify your a) and b) above? Are you offering those as those two examples of materiality: Info that an Examiner could use in a rejection and statements contrary to an earlier position? 

Quote from: JimIvey on 01-27-15 at 08:21 PM
I've had examiners refuse to consider any evidence of any kind that wasn't cited in an IDS, except for declarations as you've noted.

Is it in the MPEP that examiners aren't required to "consider" any information except that cited in an IDS?  Maybe a reply appendix would suffice since the examiner is required to consider the reply itself.

Ah, interesting ... so even if there's no specific rule about how an Applicant "submits" evidence, this is effectively determined by the "will be considered" language that governs IDSes?

And then there's "entry" of evidence. That word is in the MPEP a lot, though it seems mostly to relate to timing.

Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

JimIvey

Quote from: khazzah on 01-27-15 at 10:38 PM
Quote from: JimIvey on 01-27-15 at 08:21 PM
When I've wanted to cite a dictionary, it was to counter an examiner's broadest unreasonable interpretation of a claim term.  Accordingly, the dictionary definition a) doesn't make part of a prima facie grounds for rejection of a claim and b) isn't contrary to any argument I've made. 

Gotcha: rebuttal to the Examiner's position on BRI isn't "material".

Can we take this even further and say that information isn't material just because it touches on claim construction? I think we touched on this a long time ago, and at least some folks said claim construction is material.

Jim, can you clarify your a) and b) above? Are you offering those as those two examples of materiality: Info that an Examiner could use in a rejection and statements contrary to an earlier position? 

I got it from 1.56 itself:

Quote(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

    (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant takes in:
        (i) Opposing an argument of unpatentability relied on by the Office, or
        (ii) Asserting an argument of patentability.

Quote from: khazzah on 01-27-15 at 10:38 PM
Quote from: JimIvey on 01-27-15 at 08:21 PM
I've had examiners refuse to consider any evidence of any kind that wasn't cited in an IDS, except for declarations as you've noted.

Is it in the MPEP that examiners aren't required to "consider" any information except that cited in an IDS?  Maybe a reply appendix would suffice since the examiner is required to consider the reply itself.

Ah, interesting ... so even if there's no specific rule about how an Applicant "submits" evidence, this is effectively determined by the "will be considered" language that governs IDSes?

And then there's "entry" of evidence. That word is in the MPEP a lot, though it seems mostly to relate to timing.

That's the rub, sort of.  37 CFR 1.97(b)-(d) and corresponding portions of the MPEP dictate that the examiner must consider the cited references.  Without looking it up, 37 CFR and the MPEP probably dictate that the examiner must consider the application itself and responses filed by the applicant.  37 CFR and the MPEP dictate that the examiner consider certain types of declarations filed by the applicant.  It's my understanding that examiners will refuse to consider anything else, even though there's no prohibition against filing non-material information in some way other than 37 CFR 1.97(b)-(d).

Maybe the authority comes from 1.97(i):

Quote(i) If an information disclosure statement does not comply with either this section or ยง 1.98, it will be placed in the file but will not be considered by the Office.

Perhaps any submission of information, whether material or otherwise, is considered an IDS that doesn't comply with 1.97.

Can an examiner refuse to consider information included in a response such as appendixes expressly included in a response?  It can't be that examiners can refuse to consider any and all information not submitted in an IDS because the response itself is information not submitted in an IDS.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

JimIvey

Quote from: khazzah on 01-27-15 at 07:07 PM
Another is Appendices to a Response. I've provided both dictionary definitions and Wikipedia entries as an Appendix to a Response. I've seen other types of documents included as a Response Appendix, mostly excerpts from textbooks.

How did you do that, by the way?  Did you save dictionary web pages or dictionary scans as PDFs and attach them to the PDF of the brief?  Did you just type up the definitions with URLs to the dictionary definitions?

Thanks.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

Tobmapsatonmi

I've seen web pages as print-to-PDF, and textbook pages as scanned images, both for routine responses and for appeal brief evidence.

I don't think I would use URLs.  Things get changed without redirects, then the record is messed up.  I probably wouldn't be surprised to see something in the MPEP citing to the APA stating URLs are not accepted for on-record stuff.

I inherited a case where the drafting attorney actually put a bunch of URLs in the application specification for purposes of teaching and the like, and "hereby incorporated by reference in its entirety".  What a worthless mess. 
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

khazzah

Quote from: JimIvey on 05-06-15 at 12:15 AM
Quote from: khazzah on 01-27-15 at 07:07 PM
Another is Appendices to a Response. I've provided both dictionary definitions and Wikipedia entries as an Appendix to a Response. I've seen other types of documents included as a Response Appendix, mostly excerpts from textbooks.

How did you do that, by the way?  Did you save dictionary web pages or dictionary scans as PDFs and attach them to the PDF of the brief?  Did you just type up the definitions with URLs to the dictionary definitions?

Hmm. I think I've used a few different mechanisms.

For the Wikipedia entry, I remember i just PDFed the page. Same for an online technical dictionary (FOLDOC?).

For dictionary definitions, early on I scanned a page from a print dictionary, then later on I switched to PDF'ing a page from an online dictionary. And yeah, I do remember once or twice just typing in the definition from the dictionary and providing a  cite to the dictionary entry. 
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

NJ Patent1

I too have used different "mechanisms"; a photocopy, a scanned PDF, or some HTML file converted to a PDF (but never just a URL, e.g. see www.xyz.whatver.  But maybe I need a new Blue Book?).  My "exhibits" (e.g. journal articles) have been documentary support, submitted not just linked to, for a position in the remarks; my "arguments" are more than "naked attorney arguments".  They have some "meat" behind them, or so say I.  Whether the Ex ever "considered" them in the IDS sense should not really matter for the PTAB or the CAFC.  Like a 132, they are "in/on" my record.  I don't recall any of my "exhibits" ever being listed on the face of a granted patent I prosecuted that went through appeal, exhibits and all.  For reasons JI stated, I see no reason to list my exhibits in an IDS.  I save the IDS for references that maybe possibly might somehow scuttle one or more claims.  This is my "duty of candor" as I best understand it.  IMO any "deception" would be in the disingenuous use of the exhibit; or "lies" in the 132. 

Note not on point.   FWIW  on the TM side, simply saying "the information requested by the Examining Attorney can be found here doesn't suffice.  A PDF or JPG (or paper as case may be) is required. 

Robert K S

Quote from: NJ Patent1 on 05-06-15 at 05:33 AMFor reasons JI stated, I see no reason to list my exhibits in an IDS.  I save the IDS for references that maybe possibly might somehow scuttle one or more claims.

Ditto.  If it's timely in the record, it's evidence that can be considered on appeal.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

JimIvey

Thanks.  I'll include captured web pages as appendices.  It might be a bit tricky to get the automatically generated table of contents to accommodate, but I think I can do it.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

JimIvey

I thought I'd toss out a tip.  Maybe it will help someone.

All the online dictionaries I've found have tons of ads and lots of junk and don't print well.  So, I set out to get a mobile-friendly version of each page.  I tried many clever tricks, none of which worked.  But it was actually fairly easy to get the pages on my phone (Android).  The browser has a "Print..." function and one of the print options is to save as a PDF.  One of the options for saving was Google Drive.  So the PDFs I got are nice and compact and uncluttered.

pdftoppm did a nice job of converting each PDF into single-page images that can be easily incorporated into a word processing document.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.



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