Monday, November 05, 2012

Board cites In re Soni in Ex parte Gao

From Ex parte Gao:

We are also not persuaded that Appellants have advanced evidence of unexpected results sufficient to outweigh the Examiner‟s prima facie case.
As Appellants argue, although “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims[,] . . . . [t]his does not mean that an applicant is required to test every embodiment within the scope of his or her claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Nonetheless, “[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).


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