“Attorney Arguments” Not Accepted as Evidence When Evaluating a §102(e) Anticipation Patent Rejection

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences affirmed an anticipation rejection involving a Tokyo Electron invention after finding that the applicant relied on unsupported attorney argument.

The disputed argument concerned what a claim term would mean to a person of ordinary skill in the art. The applicant did not cite the specification, prior art, technical literature, or other authoritative evidence, and did not submit a declaration under 37 C.F.R. § 1.132.

The Board explained that arguments of counsel cannot take the place of evidence. When a position depends on the knowledge or understanding of a skilled person, the record should include objective support.

Such support may come from the specification, cited references, related patents, textbooks, technical treatises, or a qualified declaration.

Practical takeaway: Build an evidentiary record. Once evidence is submitted, the examiner must consider and substantively address it rather than dismissing it as mere argument.