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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