Probative Value of Objective Evidence

I.

TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY

ACTUAL PROOF

Objective evidence which must be factually supported by an

appropriate affidavit or declaration to be of probative value includes evidence of

unexpected results, commercial success, solution of a long-felt need,

inoperability of the prior art, invention before the date of the reference, and

allegations that the author(s) of the prior art derived the disclosed subject

matter from the inventor or at least one joint inventor. See, for example,

In re De Blauwe,

736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.

Cir. 1984) (“It is well settled that unexpected results must be established by

factual evidence.” “[A]ppellants have not presented any experimental data showing

that prior heat-shrinkable articles split. Due to the absence of tests comparing

appellant’s heat shrinkable articles with those of the closest prior art, we

conclude that appellant’s assertions of unexpected results constitute mere

argument.”). See also

In re Lindner,

457 F.2d 506, 508,

173 USPQ 356, 358 (CCPA 1972);

Ex parte George,

21 USPQ2d 1058

(Bd. Pat. App. & Inter. 1991).

II.

ARGUMENTS BY APPLICANT CANNOT TAKE THE PLACE OF EVIDENCE

Arguments presented by the applicant cannot take the place of

evidence in the record.

In re Schulze,

346 F.2d 600, 602,

145 USPQ 716, 718 (CCPA 1965) and

In re De Blauwe,

736 F.2d

699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not

evidence and which must be supported by an appropriate affidavit or declaration

include statements regarding unexpected results, commercial success, solution of a

long-felt need, inoperability of the prior art, invention before the date of the

reference, and allegations that the author(s) of the prior art derived the

disclosed subject matter from the inventor or at least one joint inventor.

See

MPEP § 2145

generally for case law pertinent to the

consideration of applicant’s rebuttal arguments.

III

arding unexpected results, commercial success, solution of a

long-felt need, inoperability of the prior art, invention before the date of the

reference, and allegations that the author(s) of the prior art derived the

disclosed subject matter from the inventor or at least one joint inventor.

See

MPEP § 2145

generally for case law pertinent to the

consideration of applicant’s rebuttal arguments.

III.

OPINION EVIDENCE

Although factual evidence is preferable to opinion testimony, such

testimony is entitled to consideration and some weight so long as the opinion is

not on the ultimate legal conclusion at issue. While an opinion as to a legal

conclusion is not entitled to any weight, the underlying basis for the opinion may

be persuasive.

In re Chilowsky,

306 F.2d 908, 134 USPQ 515

(CCPA 1962) (expert opinion that an application meets the requirements of

35 U.S.C.

112

is not entitled to any weight; however, facts supporting

a basis for deciding that the specification complies with

35 U.S.C.

112

are entitled to some weight);

In re

Lindell,

385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an

affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in

the case, “some weight ought to be given to a persuasively supported statement of

one skilled in the art on what was not obvious to him.” 385 F.2d at 456, 155 USPQ

at 524 (emphasis in original)).

In assessing the probative value of an expert opinion, the

examiner must consider the nature of the matter sought to be established, the

strength of any opposing evidence, the interest of the expert in the outcome of

the case, and the presence or absence of factual support for the expert’s opinion.

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,

776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985),

cert. denied,

475

U.S. 1017 (1986)

an expert opinion, the

examiner must consider the nature of the matter sought to be established, the

strength of any opposing evidence, the interest of the expert in the outcome of

the case, and the presence or absence of factual support for the expert’s opinion.

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,

776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985),

cert. denied,

475

U.S. 1017 (1986). See also

In re Oelrich,

579 F.2d 86, 198 USPQ

210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in

the art were sufficient to rebut the

prima facie

case of

obviousness);

Ex parte Gray,

10 USPQ2d 1922 (Bd. Pat. App.

& Inter. 1989) (statement in publication dismissing the “preliminary

identification of a human b-NGF-like molecule” in the prior art, even if

considered to be an expert opinion, was inadequate to overcome the rejection based

on that prior art because there was no factual evidence supporting the statement);

In re Carroll,

601 F.2d 1184, 202 USPQ 571 (CCPA 1979)

(expert opinion on what the prior art taught, supported by documentary evidence

and formulated prior to the making of the claimed invention, received considerable

deference);

In re Beattie,

974 F.2d 1309, 24 USPQ2d 1040 (Fed.

Cir. 1992) (declarations of seven persons skilled in the art offering opinion

evidence praising the merits of the claimed invention were found to have little

value because of a lack of factual support);

Ex parte George

,

21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that

results were “unexpected,” unsupported by objective factual evidence, were

considered but were not found to be of substantial evidentiary value).

Although an affidavit or declaration which states only conclusions

may have some probative value, such an affidavit or declaration may have little

weight when considered in light of all the evidence of record in the application.

In re Brandstadter,

484 F.2d 1395, 179 USPQ 286 (CCPA

1973)

rted by objective factual evidence, were

considered but were not found to be of substantial evidentiary value).

Although an affidavit or declaration which states only conclusions

may have some probative value, such an affidavit or declaration may have little

weight when considered in light of all the evidence of record in the application.

In re Brandstadter,

484 F.2d 1395, 179 USPQ 286 (CCPA

1973).

An affidavit of an applicant as to the advantages of their claimed

invention, while less persuasive than that of a disinterested person, cannot be

disregarded for this reason alone.

Ex parte Keyes,

214 USPQ 579

(Bd. App. 1982);

In re McKenna,

203 F.2d 717, 97 USPQ 348 (CCPA

1953).

IV.

PROBATIVE VALUE OF COMMERCIAL

SUCCESS OR LONG FELT NEED EVIDENCE

Objective evidence of commercial success or long

felt need and failure of others may be given less weight if the record shows that

the applicant or patent owner has a strong market power or blocking patent

depending on the facts of record. “A patent has been called a 'blocking patent’

where practice of a later invention would infringe the earlier patent. The

existence of such a blocking patent may deter non-owners and non-licensees from

investing the resources needed to make, develop, and market such a later,

'blocked' invention, because of the risk of infringement liability and associated

monetary or injunctive remedies. If the later invention is eventually patented by

an owner or licensee of the blocking patent, that potential deterrent effect is

relevant to understanding why others had not made, developed, or marketed that

'blocked' invention and, hence, to evaluating objective indicia of the obviousness

of the later patent.”

Acorda Therapeutics, Inc. v. Roxane Lab.,

Inc.,

903 F.3d 1310, 1337, 128 USPQ2d 1001, 1021(Fed. Cir. 2018)

ion is eventually patented by

an owner or licensee of the blocking patent, that potential deterrent effect is

relevant to understanding why others had not made, developed, or marketed that

'blocked' invention and, hence, to evaluating objective indicia of the obviousness

of the later patent.”

Acorda Therapeutics, Inc. v. Roxane Lab.,

Inc.,

903 F.3d 1310, 1337, 128 USPQ2d 1001, 1021(Fed. Cir. 2018).

“Such a blocking patent therefore can be evidence that can discount the

significance of evidence that nobody but the blocking patent’s owners or licensees

arrived at, developed, and marketed the invention covered by the later patent at

issue in litigation. But the magnitude of the diminution in incentive in any

context—in particular, whether it was great enough to have actually deterred

activity that otherwise would have occurred—is 'a fact-specific inquiry.'”

Id.

at 1339, 128 USPQ2d at 1022. While having record

evidence of such a blocking patent may not be common, examiners should be aware of

its potential impact in evaluating secondary evidence of nonobviousness. In any

Office action, examiners should articulate why there is any discounting of the

weight of the secondary consideration evidence when addressing the evidence.