Addressing the requirements for antedating a prior art reference (for a pre-AIA patent application), the U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences that a table which purports to associate a date with a piece of evidence, but does not explain how the evidence corresponds to conception or reduction to practice, is insufficient to establish a date of invention or actual or constructive reduction to practice. In re Steed et al., Case No. 14-1458 (Fed. Cir., Oct. 1, 2015) (Newman, J.).

A group of inventors filed and prosecuted, pro se, an application for a “Web-Integrated On-Line Financial Database System and Method for Debt Recovery.” During prosecution, the examiner rejected all of the claims as obvious in view of a published patent application (Evans) alone or in combination with other references. After unsuccessfully arguing that the claimed invention was distinct from Evans, the inventors attempted to file a declaration to antedate Evans. The inventors argued that they conceived of the invention prior to the effective date of Evans and that they were diligent in actually or constructively reducing their invention to practice between their conception date and a time immediately after the effective date of Evans.

The evidence provided to the examiner included a declaration by the inventors that they had conceived of the invention several years before the effective date of Evans, as well as hundreds of pages of electronic or paper notes. The inventors also provided a table that identified certain evidence and the date corresponding to that evidence. The applicants requested that the examiner or the Board “call the inventors” if they need more information or a copy of any additional evidence. The examiner, finding the inventors’ showing insufficient to antedate Evans, continued to apply Evans as prior art.

The Board affirmed the examiner, concluding that the inventors failed to provide sufficient evidence to antedate Evans. The Board explained that the inventors failed to establish a date of either actual or constructive reduction to practice before the effective date of Evans. Furthermore, the Board found that the inventors waived any factual arguments that were not presented to the examiner and, in their appeal, had to rely only on the arguments presented to the examiner. Steed appealed.

The Federal Circuit affirmed the Board, explaining that while conception, reduction to practice and diligence are issues of law, they are based on factual determinations, and the Board’s findings are reviewed under a “sufficient evidence” standard. The Federal Circuit noted that the inventors never stated a date by which the conception or reduction to practice had been completed. Also, in terms of diligence, while the inventors provided a table that purported to show that a piece of evidence corresponded to a certain date, they did not explain what the evidence was, instead asking the examiner or Board to “call the inventors.” The “call the inventors” request was considered insufficient to establish the content of the evidence.

Regarding waiver, the Federal Circuit noted that the inventors had not waived any arguments regarding conception, reduction to practice or diligence, as it was clear from the record that the inventors disagreed with the examiner regarding those issues. Thus, the Court explained the inventors were free to elaborate on the arguments presented to the examiner before the Board.