Ex parte Boer

Informative decision only: persuasive authority, not binding precedent. When an applicant appeals a rejection and challenges the examiner's determination that a 37 C.F.R. § 1.131 declaration of prior invention is insufficient, the Board lacks jurisdiction to review that sufficiency determination because it is a petitionable matter (petition under 37 C.F.R. § 1.181 to the Technology Center Director), not an appealable one. The Board therefore treats the examiner's sufficiency decision as correct and decides the § 103 rejections on that basis. No prior Board or Office precedent is named in the decision; the Board relies on M.P.E.P. § 715.08 for the division between petition and appeal. For the examiner, a sufficiency finding on a Rule 131 declaration is effectively insulated from Board review, so the rejection stands on the premise that the reference is not removed. For the appellant, arguing declaration sufficiency in an appeal brief gains nothing: the Board treats the examiner's determination as correct and affirms, here sustaining the § 103 rejections of claims 1-34 and 36-38. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: No multi-factor test. The Board applied M.P.E.P. § 715.08: sufficiency of 37 CFR 1.131 affidavits or declarations is reviewed and decided by a primary examiner; review of questions of formal sufficiency and propriety is by petition under 37 CFR 1.181 answered by the Technology Center Directors; and review on the merits of a 37 CFR 1.131 affidavit or declaration is by appeal to the Board. The Board treated the sufficiency dispute here as a petitionable matter at this stage. TRIGGERING FACTS: Appellants filed a Rule 131 declaration signed by three of four inventors to remove Tzannes as § 102(e) prior art. The examiner found it ineffective to overcome the references used in the final rejection and the advisory action. Appellants did not petition the Technology Center Director but argued sufficiency in the appeal brief (pp. 11-13), asking the Board to decide the point. KEY QUOTE: "This is a petitionable matter at this stage and we do not have jurisdiction to overrule the Examiner’s decision on sufficiency." (p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If you disagree with an examiner's finding that a Rule 131 declaration is insufficient, file a petition under 37 CFR 1.181 to the Technology Center Director rather than relying on appeal arguments, because the Board will treat the examiner's sufficiency decision as correct.