Other secondary considerations, such as commercial success, long-felt but unresolved needs and the failure of others, may also be helpful to bolster an argument
against an obviousness rejection under 35 U.S.C. § 103. The USPTO relies on Applicants to provide evidence of a nexus between rebuttal evidence and the claimed
invention. Such evidence should be supported by a Declaration under 37 C.F.R. § 1.132 and/or the specification in the rare case that the specification provides
such evidence. To view the post, use the navigation menu on the
side of this site under Prosecution Topics
35 U.S.C. § 103
Secondary Indicia
Other Indicia, or click
Here.
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As noted in Graham v. John Deere Co., secondary considerations may be presented as evidence of nonobviousness. Particularly in the chemical fields, one such
pertinent consideration may be unexpected results. In order to successfully make an unexpected results argument, Applicants must show that differences in properties
between the claimed invention and the cited art differ to such an extent that the difference is really unexpected (see MPEP § 716.02). It is important to keep in
mind that “[a] showing of unexpected results must be based on evidence, not argument or speculation” (see MPEP § 2145). Where such evidence is available in the
specification, provided in a 37 C.F.R. § 1.132 declaration, or both, it may be beneficial to argue unexpected results when traversing a rejection under 35 U.S.C.
§ 103. To view the post, use the navigation menu on the
side of this site under Prosecution Topics
35 U.S.C. § 103
Secondary Indicia
Unexpected Results, or click
Here.
 |
On December 21, 2009, the Board of Patent Appeals and Interferences (BPAI) issued a precedential decision in Ex parte Gutta, which pertains to the patentability
of algorithms. The decision created a two prong test for evaluating whether practical applications of algorithms recite statutory subject matter. Attorney David Moore
has prepared an excellent synopsis of the case. To view the post, use the navigation menu on the side of this site under
Articles
Algorithm Patentability, or click
Here.