What are common reasons for an affidavit or declaration under 37 CFR 1.132 to be considered insufficient?
The MPEP outlines several reasons why an affidavit or declaration under 37 CFR 1.132 might be considered insufficient to overcome a rejection:
- Lack of relevance:
It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof.
(Form paragraph 7.66.01) - Mere affirmation of function:
It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof.
(Form paragraph 7.66.02) - Lack of specificity to claims:
It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims.
(Form paragraph 7.66.03) - Insufficient evidence of long-felt need:
It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem.
(Form paragraph 7.66.04)
These reasons highlight the importance of ensuring that affidavits or declarations are relevant, specific, and provide objective evidence to support the nonobviousness of the claimed invention.
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