Monday, 15 November 2010

T 1625/06 – Gimme More

The present decision comprises some interesting statements on an affidavit which was filed by the applicant whose application had been refused, in order to establish sufficiency of disclosure (click to enlarge):

(Click to enlarge)

The Board does not consider this document persuasive:

[7.1] With respect to the signed affidavit […] referred to by the appellant as “Annex 4” the following observations are made.

[7.2] In the board’s communication, it was noted that when assessing the sufficiency of disclosure in the light of common general knowledge, the relevant knowledge is that of the average skilled addressee and the question was raised as to whether the deponent might not be too highly qualified to be regarded as a notional, i.e. average, skilled addressee. The appellant did not make any submissions or provide any further information which would have helped to clarify this matter.

[7.3] As far as the content of the affidavit is concerned, the board finds that it essentially comprises a series of assertions to the effect that various technical requirements of the invention, in particular the identification of spectrum use and availability and the placement of subcarriers throughout a span of frequencies, could have been realised by the notional skilled person without undue burden. No further evidence has been offered in support of these assertions. As such, the content of the affidavit does not go beyond the mere expression of an opinion by the deponent that the application provides a sufficient disclosure for the invention to be put into effect […].

[7.4] Even if it were to be accepted for the sake of argument that the deponent could properly be regarded as a person of average skill in the relevant technical field, the board takes the view that an affidavit which merely expresses the opinion of a single person concerning matters of general knowledge and sufficiency of disclosure cannot, under the given circumstances, be regarded as a satisfactory proof that specific technical information which would have to be read into the application to make it complete would have been readily available to those of ordinary skill in the art.

[7.5] The board further notes that reference is made to “methods and systems for identifying spectrum use and availability” in the third paragraph of the affidavit. The techniques referred to are effectively limited to the determination of channel occupancy in the frequency domain. Thus, even if it were to be accepted for the sake of argument that such techniques were generally known at the priority date of the application, the board judges that they would not have been sufficient to enable the sensing of spectrum holes over multiple dimensions of the signal space as required by the present invention […].

[7.6] In view of the foregoing, the board concludes that the submitted affidavit lacks any probative value for the purpose of establishing compliance with the requirements of A 83.

If you wish to download the whole decision, just click here.


Anonymous said...

Another applicant once attempted the affidavit thing on me. We had refused essentially on Article 56 (and mentioned Article 83 too), the document filed was a series of assertions imputing me with hindsight, selective reading, etc., and that the invention wouldn't have been obvious to the signatory.

The funny thing was that the literary style of the "affidavit" rather curiously resembled the representative's. Furthermore, when I looked up the signatory's name in the Internet, I saw that his command of the English language was nowhere near the one demonstrated in the document, or it had improved tremendously in only a year or two. Furthermore, his technical field had really little in common with the application's, so the alleged invention would have indeed, in all probability, not been obvious to the signatory.

The rather long document was completely disregarded by the BoA (WIMRE - IIRC). In addition to upholding the assessment on I.S., the Board found added subject-matter I had overlooked.

I suppose that applicants only try things that work at the USPTO.