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Author Topic: What is the standard in a 1.132 declaration?  (Read 238 times)

dab2d

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What is the standard in a 1.132 declaration?
« on: 10-19-17 at 10:34 am »

The Office submitted that the declaration does not carry weight because

"the statement in the declaration 'to the best of my knowledge' is insufficient to establish that the structure in question ... as set forth."

Isn't all testimony given to the best of one's knowledge?
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smgsmc

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Re: What is the standard in a 1.132 declaration?
« Reply #1 on: 10-19-17 at 02:11 pm »

Did you establish the credentials and level of expertise of the declarant?
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NJ Patent1

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Re: What is the standard in a 1.132 declaration?
« Reply #2 on: 10-19-17 at 03:46 pm »

Yea, sort of.  But not necessarily.  One “testifies” on personal knowledge.  The dec usually ends with something like:  “mindful of … all statements herein based on personal best knowledge are true, all statements based on information and belief are believed to be true.”  Establishing the bona fides noted by smgsmc go to the credibility of the (not crossexamined and maybe paid for) statements in the dec.  But that refusal to give weight does seem a bit hypertechnical, but IMHO the "best" really doesn't belong there. 
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fewyearsin

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Re: What is the standard in a 1.132 declaration?
« Reply #3 on: 10-19-17 at 04:26 pm »

This is one of many frustrating things dealing with Office personnel who are untrained in law or legal thinking.  Many Examiners believe, or are taught, that it is either Yes or No.  Whereas, in this case, it is more of a balance.  Based on the information in the Declaration, and the prior art reviewed by the Examiner, what is the most likely outcome?  Instead, the Examiner sees a "deficiency" in the Declaration, and declares it void.

The worst I ever saw was an Examiner's supervisor, during an interview, saying that "he would not consider" our evidence of unexpected results.  Not "they are not persuasive," which we could have handled and at least responded to, but "the examiner refuses to consider the evidence" is really hard to explain to clients, and is not the law.  But the supervisor couldn't understand anything other than (1) Yes, I'll consider them and allow the claims, or (2) No, I won't consider them so that I can maintain the rejection.

Like I said, frustrating.

In your case, have you tried calling the Examiner and seeing what language or format he would like to see?  I know you shouldn't have to refile the Declaration, but it may be your only/best recourse.
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NJ Patent1

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Re: What is the standard in a 1.132 declaration?
« Reply #4 on: 10-19-17 at 07:38 pm »

fewyears: No “because” whatsoever (untimely, results not tied to a feature of the claim(s), didn’t wait for Simon says)?  IMO apparent outrageous violation of the APA!  Dab’s situation is a bit different.  A simple “because Declarant does not testify to facts based on personal knowledge, the Declaration carries no weight (or, better, will not be considered) would IMO legally suffice.  I don’t agree that dab “shouldn’t” have to refile the dec.  IMO the Examiner has  a nitpicking, formalistic, but IMO legally defensible evidentiary argument for ignoring the dec.  IMO it is not whether the FRE strictly applies, rather whether basic rules of “witness” competency and evidentiary foundation apply. 

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