Opinions in applicant's affidavit on ultimate legal issue of sufficiency
of disclosure are not evidence, but statements of fact, however com-
mingled with inadmissible assertions, ought to be considered. In re
Naquin, 1428.
In view of obligation to consider all evidence bearing on obviousness
issue under 35 USC 103, affidavits by those skilled in the art must be
considered so far as they state facts. In re Aufhauser, 1477.
Anticipatory disclosure, not a statutory bar, may be removed as
reference against generic claim by Rule 131 affidavit showing prior
reduction to practice of as much of claimed invention as reference shows;
this priority need not always be shown directly; when that species of
generic invention which has been completed prior to effective date of
reference would make obvious to one of ordinary skill in the art the
species disclosed in reference, reference may be said to have been
indirectly antedated; showing of prior reduction to practice of every
embodiment of invention is not required but mere conception will not
suffice; question is whether species which have been reduced to practice
suffice to provide a basis for a reasonable inference of possession of
generic invention; reasonableness of inference is not shown where appli-
cants assert only that they had a realization of generic invention and
used agents which vary widely in their chemical structure, since they
made no attempt to show that generic applicability would be a reasonable
inference from their experiments. In re Rainer, 853.
Single species reduction to practice is adequate to overcome reference
showing genus where inventor's inference that other species would
behave similarly to tested species was reasonable and well founded.
In re DaFano, 1134.
Court indicated in In re Clarke, 148 USPQ 665, that number of inde-
pendent species actually reduced to practice, while relevant as indi-
cating breadth ascribed to invention by inventor, is not necessarily
determinative; in an appropriate case, a single species can be sufficient
to antedate indirectly; a single species can be sufficient to antedate a
genus; mere prior conception of genus does not suffice for its reduction
to practice, it being necessary that species which were reduced to prac-
tice provide an adequate basis for inferring that invention has generic
applicability. In re DaFano, 1134.
Discovery in In re Fong, 129 USPQ 264, was that of a single compound
for a single purpose; court held that recitation of various environments
to which discovery could be applied did not convert the single discovery
into a number of species; instant application is distinguishable since
question of genus and species arises not in connection with environ-
ment in which invention is practiced, but in connection with discovery
itself; applicant discovered that copper in the form of its various
AFFIDAVITS-Continued
Anticipating references-Continued
compounds has certain effects on polymerization; there are many copper
compounds operable in this invention; however, there was but a single
compound operable in In re Fong; In re Fong does not apply where
discovery resides in use of family of compounds, as opposed to use of
single compound in a variety of environments. In re DaFano, 1134.
Distinguishing from references.
Applicant's opinion on ultimate legal issue of obviousness of claimed
invention is not evidence; while some weight ought to be given to a
persuasively supported statement of one skilled in the art on what was
not obvious to him, legitimate inferences from art of record are too
strong to be affected by weight to which instant affidavit is entitled.
In re Lindell, 707
Affidavit setting forth results of test of prior art oil must be given
real weight where test was at suggestion of examiner, who suggested
the specific oil to be tested. In re Wynkoop, 874.
Weight is given to expert's affidavit in so far as it reflects factual
differences between applicants' invention and prior art, but it may not
be considered dispositive of legal conclusion as to obviousness to be
derived from an evaluation of invention as a whole. In re Austin, 898.
Affidavits cannot be characterized as incompetent expressions of
opinion since, in so far as they provide evidence to support legal con-
clusion of unobviousness under 35 USC 103, they must be considered;
statements of opinion in affidavit also must be accorded some weight as
bearing upon legal conclusion required by section 103. In re Metcalf, 1057.
Applicant's affidavit is evidence as to characteristics of reference device
since it represents a report of the first-hand visual observation of factual
matter by a person qualified to observe and evaluate the subject matter
and since conclusions which he drew relative to device appear reason-
able and to be within his competence; however, affidavit is unpersuasive
in so far as it attempts to show superiority of applicant's device over
reference device since, in effect, applicant says no more than that he
thinks that his device is better than prior art device; since court is con-
cerned with facts in evaluating obviousness of an invention, an affidavit
which does no more than to express unsubstantiated opinion as to rela-
tive merits of applicant's device and prior art device is entitled to no
weight in ordinary circumstances. In re Hayatian, 1325.
Prior to recent decisions, inventor who discovered obvious improve-
ment or modification of invention on which he had filed patent applica-
tion could obtain patent protection specific to new invention only by
filing new application disclosing both original and new inventions, and
abandoning first application; decisions give him a second choice; he
may allow first application to issue, and claim new invention in separate
application having a terminal disclaimer; by this procedure, he can
obtain no claims which he would not have been entitled to under previous
practice; decisions have not enlarged scope of patent protection; how-
ever, they have effect of making public the original disclosure at earlier
date than would have been the case under previous practice; terminal
disclaimers in such cases result in benefit to public. In re Eckel, 1068.
Although Board may rely on examiner's determination unless it is
clearly erroneous, such reliance is incongruous when the only criterion
employed by examiner is simultaneously rejected; it is obviously error
when that criterion is seriously flawed. In re Naquin, 1428.
Assuming that Board relied upon portion of reference disclosure
ignored by examiner, this could not constitute a new ground of rejection
in view of In re Azorlosa, 113 USPQ 156, which holds that it is proper
for court and Board to consider everything that reference discloses. In re
Meinhardt, 1000.
Procedure after hearing or decision.
There being no special circumstances, Board is justified in refusing to
give effect to terminal disclaimer filed after Board's affirmance of double
patenting rejection. In re Aldrich, 1431.
Patent Office permits applicant to claim product or article of manu-
facture by its process of manufacture where conditions imposed by sec-
tion 706.03 (e) M.P.E.P. are met; court reverses rejection where effect
of conditions is that right to claim is improperly denied solely because
of limitations of English language; problem, in essence, is one of deter-
mining who shall decide how best to state what the invention is; 35 USC
112 places no limitations on how applicant claims his invention, so long
as specification concludes with claims which particularly point out and
distinctly claim the invention. In re Steppan, 791.
Article defined by process of manufacture.
Assuming that Patent Office practice of rejecting claims as drawn to
an improper product-by-process is implicitly permitted by 1952 Act,
without reliance upon a stated statutory basis for rejection, dispositive
inquiry is whether construction of claim itself shows it to be of the type
proscribed by that policy; thus, there is nothing inherently improper, nor
statutorily proscribed, by word groupings which merely add clarifying
language to definition of an acid phosphate, even though its structural
formula is known, as exemplified by other claims; also, use of "con-
densation product," which merely limits invention claimed to a particu-
lar acid phosphate, is proper since it particularly points out and
distinctly claims invention; analysis of claim shows it to be a sufficiently
definite product claim and not a product-by-process claim. In re Steppan,
791.
Patent Office permits applicant to claim product or article of manufac-
ture by its process of manufacture where conditions imposed by section
706.03 (e) M.P.E.P. are met; court reverses rejection where effect of con-
ditions is that right to claim is improperly denied solely because of limi-
tations of English language; problem, in essence, is one of determining
who shall decide how best to state what the invention is; 35 USC 112
places no limitations on how applicant claims his invention, so long as
specification concludes with claims which particularly point out and
distinctly claim the invention. In re Steppan, 791.
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