As noted in Graham v. John Deere Co., secondary considerations may be presented as evidence of nonobviousness. Particularly in the chemical fields, one such
pertinent consideration may be unexpected results. In order to successfully make an unexpected results argument, Applicants must show that differences in properties
between the claimed invention and the cited art differ to such an extent that the difference is really unexpected (see MPEP § 716.02). It is important to keep in
mind that “[a] showing of unexpected results must be based on evidence, not argument or speculation” (see MPEP § 2145). Where such evidence is available in the
specification, provided in a 37 C.F.R. § 1.132 declaration, or both, it may be beneficial to argue unexpected results when traversing a rejection under 35 U.S.C.
§ 103 along the lines of the following.
On pages [PAGE NUMBERS], the Office Action rejected claims [CLAIM NUMBERS] under 35 U.S.C. § 103(a) as allegedly being obvious over [CITED ART]. Specifically, the
Office Action alleged that “[SPECIFIC REJECTION LANGUAGE HERE].” Applicants respectfully submit that the claimed invention, as supported by the present
specification and further supported by the attached declaration under 37 C.F.R. § 1.132, exhibits unexpected results over the cited art and is accordingly nonobvious.
Per Graham v. John Deere Co., 383 U.S. 1 (1966), unexpected results are a secondary consideration that may tip the scales towards a conclusion of
nonobviousness. Such unexpected results may include:
- Greater than expected results;
- Superiority of a shared property;
- Presence of an unexpected property; and
- Absence of an expected property.
(See MPEP § 716.02(a)). In the present case, [NOTE WHICH OF THE TYPES OF UNEXPECTED RESULTS ARE RELEVANT HERE]. This is the case because [CASE-SPECIFIC REASONING].
As discussed in the present specification, [EVIDENCE FROM SPECIFICATION, IF ANY, PRESENTED HERE]. Further, as demonstrated in the attached declaration under 37
C.F.R. § 1.132, [EVIDENCE FROM DECLARATION, IF ANY, PRESENTED HERE]. Thus, the results yielded by the claimed invention are unexpected in view of the cited art.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
There are several considerations to keep in mind when deciding whether to present an unexpected results argument. First, the argument is pertinent to
obviousness rejections only and is not relevant to anticipation rejections under 35 U.S.C. § 102 (see MPEP § 2131.04). This applies to the other
secondary considerations from Deere as well. Second, per the above, it is critical that evidence of unexpected results by present in sources such as the
specification, a declaration, or both. Examiners have stated that it is relatively common for Applicants to present an unexpected results argument without such basis.
Where Applicants do not base such a showing on evidence, Applicants cannot rebut an Examiner’s prima facie case of obviousness. Third, Applicants should
establish a nexus between the evidence of unexpected results and the claimed invention, and the evidence should be commiserate in scope with the claimed
invention (see MPEP § 2145).