What are some common pitfalls in presenting evidence of unexpected results?

Common pitfalls in presenting evidence of unexpected results include not providing sufficient data to cover the entire claimed range and failing to show criticality. The MPEP 716.02(d) cites several cases that illustrate these issues:

In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.)

This example shows that presenting evidence for only one species (sodium) was insufficient for claims that covered all alkali metals. To avoid this pitfall, ensure that your evidence covers the full scope of your claims or provides a clear trend that can be reasonably extended to the full scope.

To learn more:

• unexpected results
• evidence presentation
• patent examination
• nonobviousness