December 1, 2020by Beau Burton

Applicants are not always required to present evidence of unexpected results in a § 1.132 declaration. If the specification identifies a result as unexpected or surprising, this evidence may be sufficient to rebut a prima facie case of obviousness. Ex parte Bergman is illustrative. Appeal No. 2019-007011 (PTAB Nov. 2, 2020) (non-precedential).

In Bergman, the claims were directed to a cosmetic composition containing a water-insoluble UV-screening agent (A) and a functionalized oil compound (B) in a cosmetically acceptable medium. The Examiner required the Applicant to elect a single species of (A) and (B) for examination. In response to the election requirement and for purposes of appeal, the claims were limited to butylmethoxydibenzoylmethane as the UV-screening agent (A) and a functionalized 2-decyltetradecanol as compound (B).

The Examiner rejected the claims over a primary reference that disclosed cosmetic compositions containing the elected compound (B) and the cosmetically acceptable medium. While the primary reference did not include specific UV-screening compounds (A), it taught that its compositions could be in the form of sunscreens. In view of this, the Examiner relied on a secondary reference to show that dibenzoylmethane derivatives (i.e., the genus of the elected water-insoluble UV-screening agents) were “well known per se as screening agents.” Accordingly, the Examiner found–and the Board agreed–that it would have been prima facie obvious to add the elected UV-screening agent (A) to the cosmetic composition of the primary reference, which expressly suggested the inclusion of a UV-screening agent.

The Applicant countered the prima facie case of obviousness by arguing “the present application already includes comparative examples that illustrate unexpected results obtained from the present invention.” Specifically, the Applicant cited a solubility test that showed that using compounds (B), including the elected compound (B1), increased the solubility of several UV-screening agents, including the elected UV-screening agent (A1), whereas the solubility of a UV-screening agent outside the scope of the invention (A7) was not improved when combined with the elected compound (B1).

The specification further showed that the maximum solubility of the elected UV-screening agent (A1) increased from 1% w/w in isododecane to 15% w/w in a mixture of isododecane and the elected compound (B1). And critically, the specification taught that “[t]he aim of . . . find[ing] efficient solvents for water-insoluble solid organic UV-screening agents” that have desirable properties “surprisingly . . . can be achieved by combining particular water-insoluble solid organic UV-screening agents defined below with particular compounds that are capable of establishing hydrogen bonds with particular partner junction groups.” That is, the specification concluded that the results were unexpected.

The Board agreed with the Applicant and found the fifteen-fold increase in the maximum solubility of the UV-screening agent (A) to be a substantial and unexpected improvement. In addition, the Board found that the cited references did not provide a basis for doubting the specification’s statement that the improvement solubility was unexpected. Therefore, the Board concluded that the evidence of nonobviousness outweighed the evidence of obviousness and reversed the obviousness rejection.

Of note is that one APJ did not agree that the evidence in the specification supported a conclusion of nonobviousness because the showing of unexpected results was based on a 50/50% mixture of the elected compound (B1) and isododecane as compared to isododecane alone and the claims did not require any particular amounts of the elected compound (B1) to isododecane. However, this conclusion overlooks the unexpected result being associated with hydrogen bonding that occurs between the compounds (B) and the UV-screening agents (A). Such an effect should occur any time the compounds (B) and the UV-screening agents (A) are combined. See, e.g., In re Kollman, 595 F.2d 48, 56 (C.C.P.A. 1979) (“Often, one having ordinary skill in the art may be able to ascertain a trend in the exemplified data which would allow him to reasonably extend the probative value thereof.”).

Takeaway: “When 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.” See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). As shown by Bergman, a showing of unexpected results may be part of the original specification. Therefore, it is important to review the specification for an express recognition of surprising or unexpected results, particularly when dealing with compositions based on known components. Also, when the evidence of unexpected results in the specification is limited in scope, it is beneficial to draft dependent claims that are closer in scope to the examples and to ascertain whether there is a trend that can be gleaned from the limited showing because, as the dissent suggests, some APJs take a very rigid approach when assessing whether a showing of unexpected results is commensurate in scope with the claims.

Judges: E. Grimes, U. Jenks, R. Townsend (dissenting)

by Beau Burton

Beau B. Burton, Ph.D., was a founding partner of Element IP. His practice focused on patent procurement, post-grant proceedings, including inter partes reviews (IPRs) and ex parte re-examination, and patent validity and infringement opinions.