Patent Law Practice Center

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)