Since the Supreme Court’s decision in KSR Int'l Co. v. Teleflex, Inc., patent examiners at the United States Patent & Trademark Office (USPTO) have wider latitude with respect to combining prior art references to support an obviousness rejection. Following KSR, the USPTO promulgated examination guidelines and rationales for examiners to use in evaluating obviousness. Patent applicants may overcome a rejection based some of these rationales, for example, by demonstrating the unpredictability present in the art at the time the invention was made. One way to do that is by surveying the state of the prior art and presenting evidence to the USPTO. A declaration under 37 C.F.R. § 1.132 (132 declaration) may add credibility to such evidence.
Among other uses, a 132 declaration may be used to disqualify references and to traverse rejections under 35 U.S.C. §101 (utility), §102 (novelty), §103 (obviousness) and §112 (written description). Patent applicants and their representatives should be mindful of several important issues when selecting an expert and when drafting the document.