How 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…

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How 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…

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What 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.…

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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…

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Can a comparison with a commercial product be used to show unexpected results in a patent application?

While it’s possible to use a comparison with a commercial product to show unexpected results, it’s generally not considered sufficient on its own. The MPEP 716.02(e) provides guidance on this: ‘Comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing…

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What does ‘commensurate in scope’ mean in the context of unexpected results?

‘Commensurate in scope’ refers to the requirement that evidence of unexpected results must cover the entire range of the claimed invention. The MPEP 716.02(d) states: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope…

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