Patent practitioners may use expert affidavits during patent prosecution to put evidence in the record. For example, the evidence may support secondary considerations, establish how one skilled in the art would understand certain technical terms, or establish whether disclosure in a particular reference inherently includes some feature. There are numerous posts on this blog discussing various examples of declaration evidence, and it can be used to advantage to advance applications toward allowance.

The USPTO makes clear via the MPEP that examiners must consider declaration evidence. However, the USPTO can be extremely slippery and wriggle out of situations (where it would seem that they are boxed in) by relying on technicalities to dismiss declarations. In this way, the Office can avoid having to actually confront the evidence in the declaration.

A recent PTAB case illustrates one such way the Office has dismissed a declaration - by finding fault with the verb tense used in the declaration.

The case (application is 16/459,212) relates to devices and methods for preparing microscopic samples, such as TEM (Transmission Electron Microscope) lamellae (i.e., thin layers or membranes of a sample material). The application proposes a receptacle device for microscopic samples and a microscopic sample holder system with which an additional degree of freedom of movement is provided for a received microscopic sample.

Claim 1 on appeal is reproduced below (with emphasis added as to one of the terms at issue in the appeal).

1. A receptacle device, wherein:
the receptacle device is configured to receive and prepare a microscopic sample;
the receptacle device is mountable onto a sample stage which is in a sample chamber of a microscope system;
the sample stage is movable in at least three degrees of freedom comprising: a first translational degree of freedom; a second translation degree of freedom perpendicular to the first translational degree of freedom; and a rotational degree of freedom about an axis, R1, which runs perpendicular to a surface of the sample stage;
the receptacle device comprises a switch configured to rotate the receptacle device about an axis, R2, to move the receptacle device from a first position to a second position which is different from the first position; in the first position, the axis R2 is arranged at an angle α relative to the axis R1; in the second position, the axis R 2 is arranged at the angle α relative to the axis R1; and the angle α is from 10° to 80°.

Specifically, at issue in the case was the meaning of the term “switch.” Without getting into all of the various details, generally the applicant insisted the term was well understood in the art to be structural (and thus not a means plus function term) and further that the term was understood in this particular art as having the structure of a piezo or electric drive or actuator. The applicant submitted an expert declaration in support of this position.

Forgetting that there were some ambiguities (being generous) in the specification as to whether the switch included the actuator or not, the PTAB faulted the declaration because it used the present tense. In other words, rather than provide evidence of what would have been understood at the time of the invention, which is the controlling time period, the declaration provided evidence as of the date the declaration was signed. From the decision:

In contrast, we do not give substantial weight to the Biberger Dec. for several reasons. Procedurally, rather than aver what was understood about the meaning of the disputed switch terminology as of the July 26, 2018, filing date of Appellant’s German priority patent filing, the Declaration is made in the present tense, i.e., represents facts and opinions as of the December 10, 2021, execution date of the Declaration. Thus, the Declaration does not indicate whether the statements comprise Dr. Biberger’s personal understanding as of 2021, or whether the statements support what a person of ordinary skill in the art would have understood as of the time of filing. Moreover, there is no indication that any of the webpages constituting exhibits to the Declaration were available as of Appellant’s foreign filing priority date or even the subsequent filing of the U.S. patent application now before us.

Thus, not only did the declaration allegedly use the wrong tense (since it is irrelevant what would be understood by a person skilled in the art in 2021), but the declaration cited various websites, none of which was established as being available as of the priority date (in fact some even had copyright dates well after the priority date). An example paragraph from the declaration is provided below:

While the PTAB is technically correct that there was not an indication that the web pages were available as of the priority date, it seems debatable that the declaration used the “present tense.” The sentence structure used in the declaration (not only in paragraph 19, but throughout) refers to what the declarant (or a person skilled in the art) “would know” based on the specification as filed (the ‘444 publication). I am not an English major, but the sentence structure in the declaration looks to be the conditional tense, not the present tense. The present tense is used to describe actions that are happening now or regularly, while the conditional tense is used to describe hypothetical or imaginary situations, often with an "if-then" construction. In the example sentence "I would know that the term switch includes an actuator," the conditional tense is used to suggest a hypothetical scenario in which the speaker has knowledge of the term "switch."

Thus, while at the end of the day the PTAB likely would not have reached a different conclusion even had the declaration used the “correct” verb tense, the case still illustrates the importance of ensuring that declaration evidence is properly prepared so as to establish the facts that are relevant to the inquiry at hand - and that includes ensuring that the evidence establishes what would have been known or understood at the time of the priority filing, not sometime later during prosecution.

So, be careful in drafting your declarations. Using the wrong verb tense is (or would be?) like walking a tightrope without a net. You might make it across, but one misstep and you'll be plummeting into a grammatical abyss.