Monday, March 21, 2011

The need for specific comparative data to rebut prima facie obviousness

The Bacon & Thomas blog concludes its discussion of the Ex Parte Akio Ochiai case with the observation :

Thus, when relying on an argument of an unexpected or unpredictable result to overcome an obviousness type rejection, providing solid comparative data or evidence in support of the argument remains to be important.

For the "combining old ingredients of known properties," the BPAI cited to In re Kerkhoven, 626 F.2d 846 and Ex parte Quadranti, 25 USPQ2d 1071.

The BPAI reminded the patent applicants: However, “any superior property must be unexpected to be considered
as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007).

The BPAI further stated:

Thus, “[m]ere improvement in properties does not always suffice to
show unexpected results. . . . [W]hen an applicant demonstrates substantially
improved results . . . and states that the results were unexpected, this should
suffice to establish unexpected results in the absence of evidence to the
contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
Moreover, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art
.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991).
Also, “the discovery of an optimum value of a variable in a known
process is usually obvious.” Pfizer v. Apotex, 480 F.3d at 1368. The
rationale for determining the optimal parameters for prior art result effective
variables “flows from the ‘normal desire of scientists or artisans to improve
upon what is already generally known.’” Id. (quoting In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003)).

Just saying the results are unexpected is not enough:

Thus, while Appellants argue that the results presented show
unexpected results, there is no clear or specific comparative data or evidence
supporting that argument. Cf. In re Cole, 326 F.2d 769, 773, (CCPA 1964);
In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel
cannot take the place of evidence). We are therefore not persuaded that
Appellants have advanced sufficient evidence to rebut the prima facie
obviousness shown by the cited references.

The patent applicants lost.

IPBiz readers may recall an earlier post

CAFC affirms obviousness of Infosint's patent claims
which included

Of what happens when one does NOT assert unexpected results:

As an initial matter, Infosint does not contend that the use of an open, non-pressurized
reactor produced any unexpected or superior results. Moreover, Infosint’s evidence of unexpected
results is insubstantial because it does not compare the claimed process to Forney 1970, which, as
shown above, discloses each limitation of Claim 24, including open, non-pressurized conditions. In
any event, evidence of unexpected results is not availing where, as here, there is an overwhelming
prima facie case of obviousness.66


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