How does the presence of an unexpected property affect patent nonobviousness?
The presence of an unexpected property can be strong evidence of nonobviousness in patent applications. According to MPEP 716.02(a):
Presence of a property not possessed by the prior art is evidence of nonobviousness.
This principle is illustrated by several cases cited in the MPEP:
- In re Papesch: Claims to a compound structurally similar to a prior art compound were found nonobvious because the claimed compound unexpectedly possessed anti-inflammatory properties not present in the prior art compound.
- Ex parte Thumm: A claimed range of ethylene diamine was found effective for producing regenerated cellulose, while the prior art suggested the compound had ‘practically no effect.’
However, it’s important to note that an unexpected property doesn’t automatically guarantee nonobviousness. The MPEP states:
The submission of evidence that a new product possesses unexpected properties does not necessarily require a conclusion that the claimed invention is nonobvious.
The unexpected property should be significant and provide a practical advantage to be most effective in supporting nonobviousness.
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