Monday, November 26, 2012

Proving "unexpected results" to negate obviousness

From within Ex parte Sodergard :

The Examiner finds that the evidence is not commensurate in scope with the claimed invention because the data includes specific ranges of the polycarboxylic acid and isosorbide while claim 1 is not limited to any particular range of these compounds (Ans. 8). Furthermore, the evidence provided in Table 1 of the Specification is limited to 1,2,3,4- butanetetracarboxylic acid (BTCA). However, the claims are not limited to this particular polycarboxylic acid such that the evidence is not commensurate in scope with the claim for this additional reason. The Examiner properly finds that claim 1 is broader than Appellants’ proffered evidence.

Moreover, missing from Appellants’ analysis is any comparison of their claimed invention with the closest prior art (i.e., Terado). Appellants allege that Terado exemplifies that the glass transition temperature (Tg) of compositions containing other diols, no diols, or no polycarboxylic acid have about the same Tg as each other so that there would have been no suggestion to use isosorbide in the composition (Reply Br. 11-12). But, such analysis does not address whether the increase in Tg achieved using isosorbide would have been unexpected. Appellants have not proffered any evidence that compares Terado’s composition using one of Terado’s diols with Appellants’ composition that uses isosorbide.

Without a comparison with the closest prior art, we cannot discern whether the resulting Tg obtained by Appellants using isosorbide would have been unexpected.


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