How do ‘intermediate range’ cases affect unexpected results arguments in patents?
‘Intermediate range’ cases present unique challenges when arguing for unexpected results in patent applications. MPEP 716.02(d) provides guidance on this issue: The court has held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of ‘a marked improvement, over the results…
Read MoreWhat is the importance of demonstrating criticality of a claimed range?
Demonstrating the criticality of a claimed range is crucial in overcoming obviousness rejections. The MPEP 716.02(d) provides guidance on this: To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. This means that applicants…
Read MoreHow many examples are needed to demonstrate superiority for nonobviousness in patents?
When it comes to demonstrating superiority to support nonobviousness in patent applications, there is no set number of examples required. According to MPEP 716.02(a): No set number of examples of superiority is required. This principle is illustrated by the case of In re Chupp, cited in the MPEP: Evidence showing that the claimed herbicidal compound…
Read MoreHow do examiners balance expected and unexpected results in patent applications?
Patent examiners must carefully balance expected and unexpected results when evaluating patent applications. The MPEP 716.02(c) provides guidance on this process: ‘Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut…
Read MoreCan evidence of unexpected results be presented after filing a patent application?
Yes, evidence of unexpected results can be presented after filing a patent application. MPEP 716.02(f) clarifies that evidence and arguments directed to advantages not disclosed in the original specification should not be disregarded. The Federal Circuit in In re Chu explicitly stated: “We have found no cases supporting the position that a patent applicant’s evidence…
Read MoreHow can an applicant demonstrate unexpected results for a broad claim range?
To demonstrate unexpected results for a broad claim range, an applicant should provide evidence that covers the entire claimed range. However, in some cases, testing a narrower range may be sufficient. According to MPEP 716.02(d): The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower…
Read MoreHow can an applicant demonstrate unexpected results?
To demonstrate unexpected results, an applicant should: Compare the claimed invention with the closest prior art Explain the significance of the unexpected results Provide evidence that is commensurate in scope with the claims The MPEP states: The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of…
Read MoreHow can an applicant demonstrate unexpected results in a 37 CFR 1.132 affidavit?
Demonstrating unexpected results in a 37 CFR 1.132 affidavit can be a powerful way to support patentability. MPEP 716.02 provides guidance on how to effectively present such evidence: ‘Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ…
Read MoreWhat is the ‘critical element test’ for unexpected results in patent applications?
The ‘critical element test’ is an important consideration when evaluating whether unexpected results are commensurate in scope with the claimed invention. MPEP 716.02(d) states: To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.…
Read MoreCan an applicant compare their invention with prior art that is closer than what the examiner cited?
Yes, applicants can compare their claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. This is explicitly stated in MPEP 716.02(e): “Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art…
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