In patent prosecution, the battle over obviousness under Section 103 of the Patent Act remains a focal point. Patent professionals often find themselves utilizing unexpected results as part of their argument. While unexpected results can be used as secondary considerations, the assertion that a claimed invention achieves an unforeseen outcome can sway the balance in favor of patentability even at the prima facia case. However, the subtle demarcation between "unexpected" and "different" is often muddled, leading to misconceptions that could undermine a solid argument. In this blog post, we delve into the crucial disparity between unexpected and different results, utilizing a recent case as a guiding illustration. Practical insights for patent professionals are also provided to effectively establish this distinction when presenting the case.
While patent professionals often confidently assert that their claims yield results exceeding expectations, often only a naked assertion is provided.. This can lead to a common misstep - where patent professionals open the door to the Office rebutting their case by finding that there is an unintentional conflation between "unexpected" and"different." A differentiation in outcomes does not necessarily translate to achieving the truly unexpected results, and often additional evidence and reasoning is needed to move from merely different results to unexpected results.
A recent PTAB case underscores the pivotal divergence between unexpected and different results. Appeal 2022-003331, Application 16/166,204. The invention relates to ceramic electronic components. Claim 1 on appeal is reproduced below:
1. A ceramic electronic component comprising:
an electronic component body including a superficial base ceramic layer and a surface electrode on the electronic component body, wherein the surface electrode includes:
a first sintered layer on the superficial base ceramic layer;
a second sintered layer on the first sintered layer; and
a plating layer on the second sintered layer such that the second sintered layer is between the first sintered layer and the plating layer, wherein the first sintered layer contains a metal oxide;
a first peripheral section of the first sintered layer has an exposed surface which is not overlaid with the second sintered layer or the plating layer, a first content of the metal oxide at the exposed surface of the first sintered layer is higher than a second content of the metal oxide at a boundary surface of the first sintered layer that is in contact with the base ceramic layer, and
a length of an inner edge of the exposed surface is 50% or more of a length of a second peripheral section of the second sintered layer, and the width of the exposed surface is 10 μm to 100 μm.
Claim 1 was rejected based on a combination of references. The Applicant was responding to a rejection that relied on optimization of ranges in the prior art. The Office argued that there was no evidence of criticality or unexpected results. Specifically, the Applicant argued that argued that a certain unexpected results were achieved as supported by a table with performance data in the specification. The Applicant pointed to the table showing improved results compared to the prior art. The PTAB was not impressed.
That argument is not persuasive. As an initial matter, we note that “it is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” Here, other than naked use of the word “unexpected” in the Appeal Brief, the Appellant provides no explanation of why the relied-upon results would have been considered “unexpected” as opposed to “superior.” In view of that deficiency, the Appellant’s argument fails to carry the Appellant’s burden of showing that unexpected results support a conclusion of nonobviousness.
This case reinforces the importance of clarity in demonstrating the authentic unexpectedness of a claimed invention's outcomes, not merely some difference or even superiority. Patent professionals should thus be careful of weakening their arguments by inadvertently by failing to establish this critical differentiation.
To navigate this nuanced terrain, patent practitioners can adopt pragmatic approaches to substantiate the unforeseen nature of claimed results. One strategy involves incorporating expert declarations that explicitly delineate the unanticipated character of the achieved outcomes. Experts can provide a comprehensive analysis, leveraging their domain expertise to emphasize the distinct contrast between projected and realized results. They can provide evidence that differentiates what the skilled artisan would have understood to be a mere difference versus an unexpected result.
Beyond the avenue of expert testimony, a thoughtfully constructed patent specification can wield significant influence if it include not just data, but technical reasoning explaining why results are unexpected to the skilled artisan. Including reasoning within the specification about why a result is not just different but genuinely unexpected can thus be helpful in prosecution to rebut the Office’s assertions.
So, don’t fall victim to pointing out a mere difference in outcomes when what you want to do is rely on unexpected results.