Thursday, June 18, 2015

Tips for arguing Unexpected Results Arguments to overcome obviousness

MPEP Sections 716 and 2145 provide a good primer on arguing unexpected results in order to overcome obviousness. This post will dig into the topic in a little more detail, by discussing some PTAB appeal decisions where the Applicant made an unexpected results argument.

The case law of obviousness requires that assertions of unexpected results be supported by evidence. Attorney argument alone is not sufficient. Improper use of attorney argument to show unexpected results was at play in Ex parte Wong and Ex parte Roberge.

The claims in Ex parte Wong (PTAB 2013) were directed to an orthodontic adhesive, and recited a specific ratio of working time to curing time. The Applicant argued that the properties of the adhesive were unexpected. The Applicant supported this argument by presenting in the arguments section of the Appeal Brief, data from testing of the prior art composition. The Board dismissed the test data on two grounds. First, the data wasn't entered into the record before appeal, as required by the rules governing appeal. Second, the data was presented as unsubstantiated argument of counsel, when evidence was required.

The claims in Ex parte Roberge (PTAB 2014) were directed to an engine fan nozzle with a protective coating. The Applicant explained that ice build-up on the nozzle reduced the nozzle's effective area,
which in turn affected efficiency of the engine. The protective coating prevented this reduction in nozzle area and in engine efficiency. Furthermore, a POSITA wouldn't expect the Examiner's combination to achieve this result, since in the reference the coating was used on an airfoil, where ice build-up affects aerodynamics of the airfoil rather than engine efficiency. However, this discussion appeared only in the Appeal Brief, without citation to the specification or to a declaration. The Board was not persuaded because the Applicant had "cited no specific evidence in support of their contention of unexpected results to rebut [the Examiner's] prima facie case." The Board cited In re Lindner, 457 F.2d 506, 508 (CCPA 1972).

Evidence of unexpected results can be presented in an expert declaration or in the specification, but naked assertions are not enough. Ex parte Bailey and Ex parte Eriksson show that an explanation must be provided as to why the results are unexpected.

In Ex parte Bailey (PTAB 2014), the application was directed to an "undercarriage brake light system." The Specification noted an advantage of the claimed 360o configuration:
It illuminates under the entire undercarriage providing extra visual safety to drivers when you are braking. Since visibility is 360 degrees, drivers following your vehicle and also those at intersections and those merging or yielding are alerted to your braking.
The Applicant referred to this advantage when arguing unexpected results. But the Board noted two deficiencies in the argument:
Appellant has not presented corroborating evidence that confirmation of braking to an approached vehicle constitutes an unexpected advantage. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (“One way … to rebut a prima facie case of obviousness is … to show … some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” (Citation omitted)). Rather, Appellant cursorily mentions the advantage within the Specification, which is insufficient. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[C]onclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.” (Citation omitted)).
(Emphasis in original.)

The application in Ex parte Eriksson (PTAB 2014) was directed to a stabilizing device for a manufacturing process. The claims included opposing electromagnetic stabilizers and opposing sensors. The specification briefly mentioned an advantage of this feature :
The stabilizing device, which is arranged to stabilize the position of the object with respect to the predetermined transport path, comprises at least one first pair of electromagnetic stabilizing members arranged adjacent to the air-knives and on each side of the strip. Since the air-knives and the electromagnetic stabilizing members are arranged adjacent to each other to reduce the movement of the object perpendicular to the direction of transport, an optimal damping of the vibrations is achieved at the region between the air-knives.
The obviousness rejection modified a stabilizer in the primary reference to use opposing sensors and opposing electromagnetics as taught in the secondary reference. The Applicant argued that, when combined, the differences between the two references would change their respective functions and thus would not produce predictable results. The Applicant concluded this argument by mentioning the above advantage that was briefly discussed in the specification:
The [claimed] arrangement provides superior stabilization, as described in the specification at p. 5, ll. 9-14. By applying magnetic force to both sides of the magnetic strip, the claimed invention can help to ensure that the metallic strip follows the predetermined transport path.
The Board found that the assertion of superior stabilization was "not supported by factual evidence". The Board cited to several Federal Circuit cases: In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence.”); In re Hoch, 428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual comparison of the properties of the claimed invention with the disclosure of the reference); cf., e.g., In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991).

An explanation of how the claimed feature leads to the result, plus characterization as unexpected, is still not enough. The Applicant must also convince the Board of the unexpectedness. This is illustrated by Ex parte Grispo and Ex parte van der Pol.

The Applicant in Ex parte Grispo (PTAB 2013) argued that the result was unexpected, but the Board saw the result produced by the claims to be the same as the result produced by the reference. The application was directed to a process of purging a dual head injector when injecting contrast during a diagnostic imaging procedure. One feature contested on appeal was the ordering of steps to advance the contrast plunger and the saline plunger. The Examiner did not rely on a particular reference to teach the claimed ordering, but instead took the position that "changes in sequence are prima facie obvious in the absence of new or unexpected results" (citing MPEP 2144.04(IV)(C)).

The Applicant argued that this rationale was improper for a critical limitation and explained its criticality: the claimed order "reduces the waste of relatively expensive contrast, purges air prior to injection, and does so in ... a simple two-step process." However, the Examiner found that one of the references actually “discloses the 'exact reasoning and criticality' for the air purging steps.” The Board agreed, and said the unexpected results argument failed because the Applicant did not provide "persuasive reasoning or credible evidence that the claimed invention achieves any advantage over, or even any result different from, [the Emig reference]." (Emphasis added.) The Board cited In re Hampel, 162 F.2d 483, 485 (CCPA 1947).

The Applicant in Ex parte van der Pol (PTAB 2014) argued the result was unexpected, but the Board viewed the result as inherent. The Examiner modified the UV lighting system of the primary reference to use the non-linear bulb shape from the secondary reference. The Applicant argued that the inventor had recognized advantages of the non-linear shape: reducing resistance of the air flow around the bulb (citing to the spec). The Board dismissed this argument because the Applicant didn't show that "these advantages would have been unexpected by one of ordinary skill in the art, rather than just inherent when using a spherical bulb for its known and conventional use as a UV germicidal lamp." The Board cited In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
Sometimes the Board isn't persuaded because the unexpected results arguments and evidence are contradicted by the explicit disclosure of the references. The application in Ex parte Strebelle (PTAB 2011) was directed to a chemical process for regenerating a catalyst that was used in a hydrogenation reaction. The claimed regeneration process included heating one of six listed Group VIII metals with oxygen at a specific temperature range. The primary reference in the obviousness rejection, Vollheim, disclosed the hydrogenation reaction recited in the process claim, and "mentioned regeneration is possible but without explicitly stating a method." A secondary reference, Welty, taught "catalysts of similar makeup (Group VIII elements) for use in "similar processes (cracking and reforming)", plus the claimed method of regeneration: heating the catalyst in the presence of oxygen at the claimed temperature range.

On appeal, the Applicant argued that the discovery of catalyst regeneration under the claimed conditions was unexpected. The Applicant's own specification had acknowledged the "possibility in theory of regenerating" the catalyst mentioned in Vollheim, but explained that others had found that heavy metal contamination renders regeneration "fruitless" (citing a journal article co-authored by Vollheim and Muller). The Applicant supported the unexpected results argument with an expert declaration that characterized the claimed catalyst regeneration as "completely surprising" in view of the "clear belief by other that it was not possible to regenerate such catalysts." In the Answer, the Examiner noted that "a prior art reference must be considered in its entirety," and Vollheim "clearly acknowledges that regeneration is possible. The Board was not persuaded by the unexpected results argument. The Board found that the Muller/Vollheim article did not explain the process and results in enough detail to support a finding that catalyst regeneration was fruitless, and thus did not credit the Applicant's characterization of the claimed catalyst regeneration as unexpected. 


  1. I hope you get a good thread on this issue, because I (MaxDrei) find it fascinating.

    Karen, it goes to the point we touched on in the earlier thread: civil law balance of probability vs common law evidence.

    It used to be that every US-originating specification I had to read contained the words "It has now been found, surprisingly and unexpectedly, that.... (something banal, like 2+2=4) .

    What is needed at the civil law EPO is that the application as filed makes it at least "plausible" that the invention does deliver results that are unexpected.

    Get past that and you can support with post-filed evidence.

    But if you didn't make it plausible, already on your filing date, no amount of post-filed corroboratory evidence will save you.

    Not so different in the USA. Or is it?

    1. As I understand it, the assertion of unexpectedness can be in a post filing declaration. So different than EPO.