If you make an unexpected results argument in an appeal brief in the context of anticipation, the BPAI will probably point out that you've wasted your time. A prima facie case of anticipation under 35 U.S.C. § 102 is not overcome by a showing of unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). However, as a strategic matter, if you're not to the appeal stage yet, you may still want to make this argument before the Examiner, if you suspect that the § 102 might become a § 103. Then you might choose to argue unexpected results, or any number of other 103-specific issues, as a preemptive strike.
Here are a few quotes from the BPAI on how unexpected results is irrelevant to anticipation.
Appellants contend that they have “surprisingly discovered” that using the claimed amount of flake superabsorbents yields “an improved rate of intake and capacity for complex fluids.” (App. Br. 5-6). We understand Appellants’ contention of surprising discovery to be analogous to a contention that the claimed invention yields unexpected results. Appellants’ contention however is unpersuasive, because evidence of unexpected results is irrelevant to 35 U.S.C. § 102 rejections and thus cannot overcome a finding of anticipation. In re Malagari, 499 F.2d at 1302.
(Ex parte Roman-Hess, pp. 9-10.)
Finally, the Appellants argue that the films of the Appellants’ invention unexpectedly have “improved printability (via corona treatment), while still maintaining heat seal temperatures below 105ºC, as recited in the pending claims.” App. Br. 5. An appellant, however, cannot overcome a rejection under 35 U.S.C. § 102 by showing unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
(Ex parte Miller, p. 11.)
Appellant attempts to rebut the Examiner’s rejections based on inherency under §§ 102/103 by arguing unexpected results (Br. 18). Appellant lists a variety of “unexpected results and/or benefits” of the claimed product, such as producing thinner electrolyte membranes (Br. 18). However, a rejection based on anticipation (i.e., § 102) cannot be overcome by showing unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Rather, to overcome a rejection based on inherency the Appellant must show that the prior art product does not necessarily or inherently possess the characteristics of the claimed product (i.e., the claimed product is different than the prior art product). In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also, In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980).
(Ex parte Menashi, p. 9.)
You have to be dumb as a rock to argue unexpected results in a 102 rejection :-)
ReplyDeleteNot necessarily. Some 103-relevant arguments may be called for in addressing a 102 rejection if a practitioner forsees the examiner will convert a 102 into a 103 after it is pointed out to the examiner that the 102 reference does not meet either the each-element requirement, the arrangement requirement, or the enablement requirement, all of which are needed for a valid 102 rejection. If such a conversion is predictable, it only makes sense to forfend or pre-empt it by arguing against the 103 at the same time as the 102, potentially eliminating a cycle of prosecution.
ReplyDelete>If such a conversion [from 102 to 103] is
ReplyDelete>predictable, it only makes sense to pre-empt it
>by arguing against the 103 at the same time as
>the 102, potentially eliminating a cycle of prosecution.
Robert, that's a great point. I'll revise my original post to cover this.
That said, some practitioners would rather minimize prosecution history than cycles of prosecution. Those folks would wait until the Examiner actually put a 103 on the record.
Even for those who don't place minimal prosecution history before all other goals might balk at arguing unexpected results before a 103 is on the record. Unexpected results requires a declaration rather than mere attorney argument, and many practitioners are very careful about submitting any kind of declaration.
"Unexpected results requires a declaration rather than mere attorney argument"--I don't think this is necessarily the case either, Karen.
ReplyDeleteIt may be possible to show unexpected results through evidence other than a declaration, and in some cases that evidence is simpler to produce than with an affidavit.
In some cases, pointing out to the examiner the unexpected results of the invention requires little else than reference to the specification and simple logic.
>>"Unexpected results requires a declaration
ReplyDelete>>rather than mere attorney argument"'
>I don't think this is necessarily the case. It
>may be possible to show unexpected results
>through evidence other than a declaration.
I stand corrected. I did jump the gun by improperly equating "evidence" with "declaration".
In some situations, portions of the spec can be considered evidence. MPEP 716.01 even says so: "Examiners must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims. In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986)."
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