unexpected results Archives

On April 17, 2024, the Patent Trial and Appeal Board in Ex parte Sanada (Appeal 2023-002165) affirmed an examiner’s single-reference obviousness rejection of a claim to a magnetic material comprising magnetic particles and an intercalated phase and requiring an angle of orientation between the magnetic particles and the plane of the material to be 10° or less.

In attacking the prima facie case, Appellant argued that the applied reference did not suggest the claimed combination of particularities concerning each of the magnetic particles, the intercalated phase, and the angle of orientation, and urged that the data in the specification demonstrated “unexpectedly favorable strength and magnetic properties for their inventive Examples in contrast to Comparative Examples.”

Appellant’s first argument was dismissed by the Board in view of the reference’s disclosure of overlapping ranges for each limitation, citing In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003) (“A prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). In dismissing the second argument – that data in the specification demonstrated unexpected results – the Board reviewed the specification and found it lacking:

Here, Appellant’s unexpected results are not supported by factual evidence. The Specification’s description of Figures 11–13 and Tables 1 and 2 does not describe the inventive Examples as demonstrating results that are unexpected. For instance, paragraphs 110–112 of the Specification do not describe the results shown in Figures 11–13 as unexpected and paragraph 166 merely states that results provided in Table 2 are “excellent” and “remarkable effects are obtained.” Therefore, Appellant’s assertions that the results are unexpected are supported only by attorney argument and conclusory statements in the Specification, which are insufficient.

and in a final blow noted that Appellant had not addressed whether the asserted unexpected results provided a comparison with the closest prior art. Rejection affirmed.

What could Appellant have done differently? They could have filed a Declaration supporting their contentions and providing the (apparently available) data in the form of evidence sufficient to overcome the rejection. As noted in In re Soni, 54 F.3d 746 (Fed. Cir.1995), cited by the Board in this appeal, “when an applicant demonstrates substantially improved results, as Soni did here, and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary (emphasis in original).” Because it is unusual for a patent specification to describe data as unexpected, the filing of a Declaration providing this statement and explaining the importance of the results can oftentimes mean the difference between allowance and rejection.

In Ex parte Langenfeld (Appeal 2021-004075), the Examiner rejected the claims as obvious over a combination of prior art references and based on the theory of design choice. The Patent Trial and Appeal Board (“Board”) reversed.

The invention at issue was directed to a method of producing rolled food products that included a step of cutting a dough sheet to form a roll sheet having a continuous pattern comprised of “an asymmetrical repeat unit.”

Wolf, the primary reference found by the Examiner, described a method of producing croissants. As admitted by the Examiner, Wolf did not disclose a cutting pattern that would produce an asymmetrical repeat unit. The Examiner then turned to Mel, which described making homemade crescent rolls. Mel disclosed cutting a circular dough into triangles and described that it was all right if the “triangles aren’t all perfect” because “[that] is something special about home cooking – it is not all perfect and rigid.” The Examiner thus concluded that “it would have been obvious to form the triangles and subsequently the rolls of Wolf as slightly asymmetrical in order to create a ‘homemade’ appearance that is special and pleasing to consumers.” The Examiner further contended that the claimed asymmetrical repeating unit shape was merely an obvious matter of design choice, alleging that the shape and symmetry of the rolls would have been obvious to adjust in the absence of a demonstration of criticality.

However, the Board found that, at best, Mel only suggested random variations, not “asymmetrical repeat units” as required by Appellant’s method. Thus, the Board agreed with Appellant that not only the resulting arrangement of Wolf as modified by Mel failed to meet the claim limitation, but Mel was “directly contrary to the Examiner’s conclusion that all the produced rolls would be the same and have the same asymmetry” in that Mel equated the homemade look to imperfection.

With respect to the Examiner’s allegation of obvious design choice, the Board noted that Appellant provided evidence showing that the asymmetrical repeating unit was significant to the invention (specifically, it was possible to retain a symmetrical outer appearance despite that each of crescent rolls had a different amount of dough at each end) and was more than one of the numerous configurations a skilled artisan would have found obvious for the purpose of forming rolled dough products. Because the prior art had no suggestion for changing the shape to any asymmetrical repeating unit shape, the Board found the evidence provided by Appellant was sufficient to prove non-obviousness. In addition, the Examiner did not adequately rebut Appellant’s evidence of significance. Therefore, the Board held that Appellant need not show the criticality of the change in shape for unexpected results and reversed the Examiner’s obviousness rejection.

Takeaway: When a claim feature cannot be found in prior art, examiners may apply the theory of “design choice” and often also request applicants to provide evidence of criticality to overcome an obviousness rejection based on design choice. Langenfeld, again, clarifies that evidence of criticality is not necessary under such circumstances if applicants provide unrebutted evidence of significance. Examples of evidence of significance include a different function associated with the claim feature, a stated problem solved by the claim feature, and improvements, advantages, and benefits of the claim feature (see also one of our previous posts here). Such evidence can be found in applicant’s specification and/or prior art or can be provided in the form of a declaration during examination.

Judges: C. Q. Timm, G. C. Best, and N. W. Wilson

Ex parte Nakanishi, is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing obviousness of a claim directed to a steel composition.

The claim at issue recited, in part:

A non-oriented electrical steel sheet having a chemical composition consisting of, in mass%…

Si: 1.0% or more and 4.0% or less;

Mn: 0.10% or more and 3.0% or less…

Al: less than 0.0005%;

Cu: 0.02% or more and less than 0.04%; and

Ca: 0.003% or more and 0.0100% or less…

In asserting obviousness, the examiner cited a single prior art reference disclosing a steel sheet including components and amounts that could overlap with those recited in the claim. Applicant’s arguments focused first on differences between the claimed composition and the prior art composition and then on evidence of unexpected results.

Applicant’s arguments as to composition focused particularly on the amounts of Al, Cu, and Ca in the claims and the prior art reference. Notably, applicant’s ranges of amounts of Al, Cu, and Ca were much narrower than those in the prior art reference.

Component	Claim	Prior Art Reference
Al	Al < 0.0005%	Al ≤ 3%
Cu	0.02% ≤ Cu < 0.04%	Cu ≤ 5%
Ca	0.003% ≤ Ca ≤ 0.0100%	(total content of Mo, W, Sn, Sb, Mg, Ca, Ce, and Co trace elements) ≤ 0.5%

Applicant first argued that the prior art reference did not disclose a single example composition having the claimed amounts of Al, Cu, and Ca. The PTAB quickly dismissed this argument, noting that the prior art reference was “not limited to its examples.”

Next applicant argued that the prior art reference did not recognize that the amounts of Al, Cu, and Ca were result effective and undue experimentation would have been required to arrive at the claimed narrow ranges. The PTAB replied that the prior art reference would have suggested to a skilled artisan that “all Al, Cu, and total trace element amounts within the disclosed ranges are effective for achieving” the goal of the prior art reference, “a non-oriented magnetic steel sheet whose core loss in a high frequency range can be fully reduced… including amounts within the… [claimed] ranges.”

Applicant then turned to its experimental results. Applicant argued that its experimental results showed that adding Ca in the claimed amounts to a steel sheet containing ultra-low amounts of Al unexpectedly reduces iron loss.

The PTAB noted that applicant’s experimental results were limited to compositions having a Si content of 1.3% and 1.6 % and an Mn content of 0.5%, while the claim encompassed Si contents as high as 4.0% and Mn contents as high as 3.0%. The PTAB then noted a statement in applicant’s specification that Si and Mn have the effect of reducing iron loss (the same effect applicant attributed to addition of Ca in describing its experimental results). In view of this statement, the PTAB concluded that applicant would have to provide evidence that its experimental results were representative of compositions including the minimum claimed amount of Ca and the maximum claimed amounts of Si and Mn, to effectively rebut the examiner’s assertion of obviousness.

Takeaway: Once an examiner has established that a prior art range overlaps with a claimed range, it will be difficult to persuade the examiner (or PTAB) that selection of a subrange would not have been obvious in the absence of evidence of unexpected results – in this case, the PTAB seemed annoyed that applicant even tried. It may be preferable to leave out arguments that will never succeed (e.g., the claimed composition is not exemplified in the prior art reference) and emphasize the results that might succeed (unexpected results).

A composition claim with many components, each with its own range of amounts, can make it difficult to prove that evidence of unexpected results is “commensurate in scope” with the claim. In this case, applicant showed a desirable effect over the entire range of amounts of the component it believed was important (Ca amount), provided a limited number of data points for the other components. It is often not practical to prepare a large number of compositions encompassed by a claim, but this can be addressed with a technical explanation for why additional experiments would not be expected to yield significantly different results (even more helpful if such explanation is provided in a declaration by a skilled artisan).

Judges: Owens, McGee, Inglese

Ex parte Kuhlmann, is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing prima facie obviousness of a polymer composition.

The substance of the decision in Ex parte Kuhlmann is not particularly remarkable – the examiner was affirmed by the PTAB. However, applicant argued that the allowance of a corresponding application in Europe was relevant to the issue of obviousness in the US, and the argument was not well-received.

In the Appeal Brief, applicant argued:

For reference, the Applicants respectfully submit that the EPO equivalent application EP 3255103 was granted and found to be novel and non-obvious over the US Dangayach et al. (US 5,284,938, herein Dangayach A) reference.

In the Examiner’s Answer, the examiner stated:

In response to Appellant’s statement, p. 9 of the Brief, that EP 3255103 was found novel and non-obvious over the Dangayach A is not persuasive, because that determination was not under US patent laws and rules.

In the Reply Brief, applicant further argued:

If relevant to the Appeal Board, the Appellants submit that the claims as submitted in the Appeal are identical or substantially identical to the claims granted (without issuance of an Action) in European patent EP3255103B1 and validated in 14 countries, which claims were granted over Dangayach et al. (US 5,284,938, herein Dangayach A), the main reference cited by the Examiner herein, for reasons which will further be obvious below.

And finally, in the Decision, the PTAB stated:

We find no merit in Appellant’s argument that the same or substantially the same claims in EP 3255103 B1 were found novel and nonobvious over Dangayach and thereby granted by the European Patent Office (EPO)… We are not bound by an earlier decision of the EPO. In re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979) (“Each case is determined on its own merits; allowed claims in other applications or patents are not considered in reviewing specific rejections of specific claims.”); In re Giolito, 530 F.2d 397, 400 (CCPA 1976) (“We reject appellants’ argument that the instant claims are allowable because similar claims have been allowed in a patent. It is immaterial whether similar claims have been allowed to others.”).

Takeaway: Prosecuting corresponding patent applications in different countries can be expensive and time consuming. Common sense would suggest that something that is patentable in one jurisdiction should generally be patentable in all jurisdictions. Of course, the patent laws differ from jurisdiction-to-jurisdiction. The US can be particularly idiosyncratic, as US examiners often rely on different references and/or rationales than examiners in other jurisdictions. As is evident from Ex parte Kuhlmann, directly asserting that US claims should be allowed based on an allowance in another jurisdiction can be counterproductive. A more productive approach would be to rely on the reasons for allowance in another jurisdiction to the extent they are applicable under US law. The fact of allowance in another jurisdiction might be of interest to some US examiners – but this might be better conveyed informally in an interview.

Judges: Timm, Praiss, Gupta

Ex parte Lindenblatt, is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing evidence of unexpected results.

In Ex parte Lindenblatt, the claim at issue was directed to a pharmaceutical (thyroid hormone) formulation. The relevant claim recited:

1. A solid pharmaceutical preparation comprising

levothyroxine sodium,

2-10% by weight based on the preparation of gelatine,

0.2 to 3% by weight based on the preparation of citric acid, and

a filler that is 50 to 80% by weight, based on the preparation, of mannitol, sucrose or lactose, and 10 to 30% by weight, based on the preparation, of maize starch.

In rejecting the claim, the examiner relied on a primary reference that disclosed all of the features except for the gelatin. For this deficiency, the examiner relied on a secondary reference disclosing levothyroxine sodium tablets including gelatin and fillers and describing that, when gelatin is used as a binder, the tablets have surprising stability.

Applicant argued that the tablet of the primary reference was intended to dissolve rapidly in a patient’s mouth and, thus a skilled artisan would not have been led by the secondary reference’s promises of stability through the use of gelatin.

The PTAB was not persuaded, finding that the examiner made a prima facie case of obviousness. The PTAB noted particularly that “while [the primary reference] is concerned with a composition that can easily dissolve in the mouth, such does not indicate that [the primary reference] is not interested in a product that has a stable shelf life until inserted into the mouth of a patient.”

The PTAB was persuaded, however, by applicant’s evidence of unexpected results.

First, applicant provided evidence (a journal article) showing that it was known that citric acid is a pH modifier that reduces the stability of levothyroxine sodium in tablets relative to tablets including a basic pH modifier or no pH modifier (at 10% – much higher than the claimed range and the primary reference). Then, applicant supplemented with experimental evidence, which showed the following results for stability when varying citric acid and gelatin amounts in levothyroxine sodium tablets:

Citric Acid	Gelatin	Stability
1.5%	–	★
–	–	★★
–	5%	★★★
1.5%	5%	★★★★

Looking at the evidence, the PTAB found that the stability results for the combination of gelatin and citric acid would have been unexpected, because citric acid alone was reported in the literature and shown in applicant’s experimental results to negatively affect the stabilization of levothyroxine sodium in a tablet. That is, the PTAB concluded that a skilled artisan would not have expected the combination of citric acid and gelatin to provide better stabilization of levothyroxine sodium in a tablet composition than the stabilization provided by gelatin alone.

Takeaway: In this case, the examiner provided a credible reason for expecting that addition of gelatin to the citric acid-containing tablets of the primary reference would increase stability – the secondary reference explicitly stated that stability would be increased. Applicant was able to find literature evidence suggesting that a large amount of citric acid is expected to destabilize. Applicant supplemented this with post-filing results showing that small amounts of citric acid destabilize. Together, this evidence persuaded the PTAB that the improved performance of the citric acid/gelatin combination shown by applicant was unexpected.

Applicant provided a good amount of evidence and a compelling narrative regarding unexpectedness. The PTAB’s explanation, however, gives little weight to the fact that the primary reference tablets already included citric acid. Further, the post-filing evidence regarding the effect of small amounts of citric acid would not have informed a skilled artisan of what would have been expected or unexpected at the time of the application. This case illustrates that sometimes a persuasive story can be useful in overcoming weaknesses in evidence of unexpected results.

Judges: Adams, Jenks, Townsend

Ex parte Ha, is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing the sufficiency of an examiner’s rationale for combining references and the sufficiency of an applicant’s evidence of unexpected results.

In Ex parte Ha, the claim at issue was directed to a thermoplastic resin composition for electronic device housing. The claims required, inter alia, five known components in specific amounts and a specific weight ratio between two of the components – a very typical composition claim. Independent claim 1 is reproduced in part below:

1. A thermoplastic resin composition comprising:

about 100 parts by weight of a polycarbonate resin;

about 1 to about 30 parts by weight of a rubber-modified aromatic vinyl graft copolymer;

about 1 to about 30 parts by weight of a polyester resin;

about 1 to about 20 parts by weight of a glycol-modified polyester resin having about 10 mol% to about 60 mol% of a cyclohexanedimethanol (CHDM) content based on a total amount of a diol component; and

about 0.5 to about 15 parts by weight of a vinyl copolymer comprising an epoxy group,

wherein a weight ratio of the polyester resin to the glycol-modified polyester resin

ranges from about 1:0.1 to about 1:1.

The examiner rejected the claim as obvious, citing a primary reference that disclosed a resin composition having each of the above recited features except for the glycol-modified polyester resin and the claimed weight ratio. For this, the examiner relied on the resin composition in a secondary reference.

Applicant noted that the resin composition of the primary reference was developed to solve the problem of achieving flame retardancy in a rubber-modified aromatic vinyl copolymer resin without using harmful compounds and without deteriorating impact strength. Applicant asserted that the secondary reference did not recognize or address issues relating to the use of flame retardants and, thus, a skilled artisan would not look to the secondary reference to improve the resin compositions of the primary reference.

The PTAB found applicant’s reasoning unpersuasive, noting that the secondary reference employed the claimed glycol-modified polyester resin in a resin composition that solved the different problem of achieving improved dimensional stability, heat resistance, and weld line strength. The PTAB stated that a skilled artisan would have found the improved dimensional stability, heat resistance, and weld line strength achieved in the secondary reference to be desirable attributes in the resin compositions of the primary reference and, thus, would have been led to incorporate the glycol-modified polyester resin.

Perhaps recognizing the challenges of arguing over the examiner’s prima facie case of obviousness, applicant relied heavily on rebuttal evidence of unexpected results. Applicant presented supplemental experimental evidence during prosecution showing that excluding the glycol-modified polyester resin of secondary reference from the claimed resin composition and/or including the glycol-modified polyester resin in amounts outside of claimed weight ratio resulted in inferior impact resistance and processibility.

The examiner did not appear to contest that applicant’s results demonstrated that the claimed composition exhibited an improvement over the primary reference or that such improvement would have been unexpected. Instead, the examiner argued that applicant simply did not provide a sufficient number of inventive examples to demonstrate that the improvement would occur over the entire scope of the claims (noting the generic components and wide ranges of amounts recited in the claims).

Applicant affirmatively argued during the appeal that a “skilled artisan… can clearly and reasonably extrapolate or extend the probative value of the data to other compositions within the scope of the claims.” However, the PTAB found applicant’s argument to be merely conclusory, noting applicant’s burden to provide “an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner… as the exemplary embodiment.”

Takeaways: Demonstrating obviousness in the US can be a bit different than in other jurisdictions. Applicant, in this case, presented arguments akin to the “problem-solution approach” used to argue inventive step in EP practice. However, US examiners and the PTAB often find motivation to combine references far afield from the specific problem addressed by the closest prior art. It is important to bring US obviousness arguments to bear against US obviousness rejections.

Because of the ease with which an examiner can make a prima facie case of obviousness as to composition claims, the patentability of such claims often turns on evidence of unexpected results. The sufficiency of such results often turns on whether the results are “commensurate in scope” with the claims. Arguments of unexpected results should be accompanied with at least a technical explanation – preferably from a skilled artisan – of why results for inventive examples would be expected for all compositions within the scope of a claim.

Judges: Gaudette, Cashion, McGee

In an anticipation rejection, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. However, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Instead, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972)). Although “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection . . . it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88.

This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Eckhardt.

Independent claim 16 recited a multilayer pressure-sensitive adhesive assembly comprising a propylheptyl acrylate adhesive copolymer layer and a second acrylate pressure-sensitive adhesive foam layer. The propylheptyl acrylate adhesive copolymer layer comprised (a) 50 to 99.5 weight percent of 2-propylheptyl acrylate as a first monomer, (b) 1.0 to 50 weight percent of a second non-polar monomer, (c) 0.1 to 15 weight percent of a third polar acrylate monomer, and (d) a tackifying resin in an amount of 3 to 100 parts per 100 parts of the copolymer. Independent claims 37 and 38 recited similar multilayer pressure-sensitive assemblies, but with somewhat different components (d), and different scope of components (a), (b) and (c).

The examiner rejected independent claims 16, 37 and 38 as anticipated by a single reference, Bartholomew. In response, the applicant argued that “[t]he cited reference provides a great multiplicity of possible combinations and no direction that would lead one of skill in the art to the claimed invention.” For component (a), the applicant explained that Bartholomew listed “2-propylheptyl acrylate as one of 10 options.” For the specific components (b) and (c) recited in claims 37 and 38, the applicant explained that component (b) was one of eight options listed in Bartholomew, and component (c) was one of ten listed options. For component (d), Bartholomew described a tackifying resin as optional. Based on this, the applicant argued that “the number of possible combinations presented by these passages in Bartholomew is 10 x 8 x 10 x 2 = 1600.” The applicant argued against anticipation because “one of ordinary skill in the art would be required to pick items from at least 1600 types of polymer to arrive at the claimed invention.”

The Board agreed with the applicant, finding that the anticipation rejections “rely upon picking and choosing from various lists in Bartholomew,” and that “[a] preponderance of the evidence supports Appellant’s position that Bartholomew’s disclosure is insufficient to establish anticipation of the compositional components of independent claims 16, 37, and 38.”

Additionally, the Board noted that although the ranges of amounts of components (a), (b) and (c) in Bartholomew overlapped the claimed ranges, “the Examiner has not adequately explained how Bartholomew anticipates the claims” in view of Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985).

Accordingly, the Board reversed the anticipation rejections. However, the Board entered a new ground of rejection, finding the claims obvious over Bartholomew. Specifically, the Board found that the selection of the claimed components, in the claimed amounts, would have been obvious from Bartholomew. The Board was not persuaded by the applicant’s argument of unexpected results, particularly with respect to a showing of criticality and whether the unexpected results were commensurate in scope with the claims.

Takeaway: When an examiner rejects a claim as anticipated based on several selections from lists disclosed in a prior art reference, a strong case can be made against anticipation. After overcoming the anticipation rejection, however, the question of obviousness usually remains. To rebut the case of obviousness, strong evidence of unexpected results often is necessary.

Judges: Gaudette, Hastings, Ren

Applicants are not always required to present evidence of unexpected results in a § 1.132 declaration. If the specification identifies a result as unexpected or surprising, this evidence may be sufficient to rebut a prima facie case of obviousness. Ex parte Bergman is illustrative. Appeal No. 2019-007011 (PTAB Nov. 2, 2020) (non-precedential).

In Bergman, the claims were directed to a cosmetic composition containing a water-insoluble UV-screening agent (A) and a functionalized oil compound (B) in a cosmetically acceptable medium. The Examiner required the Applicant to elect a single species of (A) and (B) for examination. In response to the election requirement and for purposes of appeal, the claims were limited to butylmethoxydibenzoylmethane as the UV-screening agent (A) and a functionalized 2-decyltetradecanol as compound (B).

The Examiner rejected the claims over a primary reference that disclosed cosmetic compositions containing the elected compound (B) and the cosmetically acceptable medium. While the primary reference did not include specific UV-screening compounds (A), it taught that its compositions could be in the form of sunscreens. In view of this, the Examiner relied on a secondary reference to show that dibenzoylmethane derivatives (i.e., the genus of the elected water-insoluble UV-screening agents) were “well known per se as screening agents.” Accordingly, the Examiner found–and the Board agreed–that it would have been prima facie obvious to add the elected UV-screening agent (A) to the cosmetic composition of the primary reference, which expressly suggested the inclusion of a UV-screening agent.

The Applicant countered the prima facie case of obviousness by arguing “the present application already includes comparative examples that illustrate unexpected results obtained from the present invention.” Specifically, the Applicant cited a solubility test that showed that using compounds (B), including the elected compound (B1), increased the solubility of several UV-screening agents, including the elected UV-screening agent (A1), whereas the solubility of a UV-screening agent outside the scope of the invention (A7) was not improved when combined with the elected compound (B1).

The specification further showed that the maximum solubility of the elected UV-screening agent (A1) increased from 1% w/w in isododecane to 15% w/w in a mixture of isododecane and the elected compound (B1). And critically, the specification taught that “[t]he aim of . . . find[ing] efficient solvents for water-insoluble solid organic UV-screening agents” that have desirable properties “surprisingly . . . can be achieved by combining particular water-insoluble solid organic UV-screening agents defined below with particular compounds that are capable of establishing hydrogen bonds with particular partner junction groups.” That is, the specification concluded that the results were unexpected.

The Board agreed with the Applicant and found the fifteen-fold increase in the maximum solubility of the UV-screening agent (A) to be a substantial and unexpected improvement. In addition, the Board found that the cited references did not provide a basis for doubting the specification’s statement that the improvement solubility was unexpected. Therefore, the Board concluded that the evidence of nonobviousness outweighed the evidence of obviousness and reversed the obviousness rejection.

Of note is that one APJ did not agree that the evidence in the specification supported a conclusion of nonobviousness because the showing of unexpected results was based on a 50/50% mixture of the elected compound (B1) and isododecane as compared to isododecane alone and the claims did not require any particular amounts of the elected compound (B1) to isododecane. However, this conclusion overlooks the unexpected result being associated with hydrogen bonding that occurs between the compounds (B) and the UV-screening agents (A). Such an effect should occur any time the compounds (B) and the UV-screening agents (A) are combined. See, e.g., In re Kollman, 595 F.2d 48, 56 (C.C.P.A. 1979) (“Often, one having ordinary skill in the art may be able to ascertain a trend in the exemplified data which would allow him to reasonably extend the probative value thereof.”).

Takeaway: “When an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). As shown by Bergman, a showing of unexpected results may be part of the original specification. Therefore, it is important to review the specification for an express recognition of surprising or unexpected results, particularly when dealing with compositions based on known components. Also, when the evidence of unexpected results in the specification is limited in scope, it is beneficial to draft dependent claims that are closer in scope to the examples and to ascertain whether there is a trend that can be gleaned from the limited showing because, as the dissent suggests, some APJs take a very rigid approach when assessing whether a showing of unexpected results is commensurate in scope with the claims.

Judges: E. Grimes, U. Jenks, R. Townsend (dissenting)

On September 15, 2020, the Patent Trial and Appeal Board (PTAB) issued a decision in Ex parte Lebovich reversing the Examiner’s rejection of claims directed to a packaged food assembly that allows the consumer to see the package contents from all angles while still permitting substantial labeling of the package. While the Board found that the Examiner’s rejection did present a prima facie case of obviousness, it further determined that Appellant’s objective evidence of nonobviousness was sufficient to rebut the Examiner’s prima facie case.

Perhaps the most interesting aspects of the Lebovich case are Appellant’s successful presentation of several types of secondary considerations not often encountered in typical prosecution (i.e., commercial success, industry praise and recognition, and solving a long-felt, unmet need), and their successful assertion that the development of brand loyalty beyond what is typical for a staple food, and particularly for meat, attributable to their food assembly qualified as an “unexpected result.”

Takeaway: This “out of the box” thinking in Lebovich serves to remind us of the essentially limitless contours of the unexpected results analysis, and should encourage us to consider all aspects of a claimed invention – how it is used, stored, transported, etc. – during prosecution in order to increase our level of advocacy.

Judges: J. Smith, G. Best, J. Snay

Declaration Anybody?

Declaration Anybody?

PTAB Dismisses Examiner’s Request for Demonstration of Criticality

Cut to the Chase – When Claimed Ranges and Prior Art Ranges Overlap, Focus on Unexpected Results

Past Performance Is No Guarantee of Future Results – Be Careful Touting Allowances in Other Jurisdictions During Examination before the USPTO

A Good Story Can Improve the Persuasive Power of Experimental Evidence of Unexpected Results

The Recurring Challenges of Chemical Compositions, Obviousness, and Unexpected Results

PTAB Reverses Anticipation Rejection for Impermissible Picking and Choosing

Prima Facie Case of Obviousness Outweighed by Surprising Results in Specification

Achieving “Brand Loyalty” Found to Be a Surprising Result

USPTO Withdraws Proposed Terminal Disclaimer Rule

USPTO Further Delays Non-DOCX Fee Until January 17, 2024