The Examiner Must Explain Why Evidence Submitted In Rebuttal To A Prima Facie Case Is Not Commensurate-In-Scope With The Claimed Invention

In Ex parte Treacy et al. (Appeal 2011-008520; Application serial no. 11/931,434), the Board reversed an obviousness rejection not because the Examiner did not make out a good prima facie case but because unexpected results were presented during prosecution and the Examiner had failed to properly consider those results.

The invention was a synergistic insecticidal composition and a method of insect control using synergistically effective amount of a neuronal sodium channel antagonist with one or more GABA (g-aminobutyric acid) antagonist compounds. Because the compounds were individually known, the Examiner rejected the claims as obvious on the basis of combining two known agents used for the same purpose. The Board did not find any error in the Examiner’s prima facie case.

However, during prosecution, multiple declarations were presented that demonstrated synergism on mortality rates of insect populations treated with insecticidal compositions including neuronal sodium channel antagonists and GABA antagonists. Notwithstanding this evidence, the Examiner refused to allow the case based on the argument that the data were not commensurate with the scope of the claims, a common PTO argument when an Applicant uses comparative data to rebut aprima facie case. Specifically, the Examiner’s position was that “[t]here are over 100,000 known insect species and the combination of hundreds of compounds in formula (I) and GABA antagonists in unlimited concentrations of applications.”

The Board reversed the rejection because the Examiner did not explain why the results were reasonably expected nor why the results were synergistic. Regarding the Examiner’s contention of inadequate scope of data relative to the claims, the Board opined that “[a]lthough secondary evidence must be reasonably commensurate in scope with the claims, Appellant is not required to test every embodiment that falls within the scope of the claims” (citing In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)). The Board further explained that the Examiner largely ignored certain data, as the Examiner only addressed an alleged deficiency in a single Declaration. Further, the Board, in addressing the Examiner’s contention of the inadequate data set particularly for untested combinations and insects found that the Examiner failed to adequately state the case: “the Examiner has not provided any rational explanation as to why the untested embodiments ... would not be expected to show synergism given the scope of the data provided in the Specification and declarations.”