Ex parte Takayama

August 12, 2011 – Blog Post

Appeal 2009-014504

Application 11/042,187

The issues in this case (Appeal No. 2009-014504, Application No. 11/042,187, Denied on July 28, 2011) are the 112 written description rejection on Appellants’ allegation of unexpected results over a narrow range and the 103 rejection based on Appellants’ evidence not establishing unexpected results.

Appellants argued for unexpected results regarding the newly claimed narrower range, admitting that such narrower range is a different invention than the invention embraced by the broader ranges of Co, Ni or Al described in the original disclosure. The Board concluded that even though the more narrowly claimed new ranges of Co, Ni or Al fall within the broader disclosed ranges of these elements, Appellants’ admission of unexpected results occurring over the narrower range evinces that the narrower claimed range must be directed to a different invention than the one described in the original disclosure and thus lacks written descriptive support within the meaning of 35 U.S.C. § 112, first paragraph.

As to the 103 obviousness rejection, the Board noted that to be probative of nonobviousness, the showing must establish unexpected results over the entire range.In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980) (A showing of unexpected results must be commensurate in scope with the degree of protection sought by the claims on appeal). The Board concluded that the showing of unexpected results was not found probative of nonobviousness of the claimed subject matter.

The Board’s decision on this case suggests that if it becomes necessary for Applicant to show unexpected results of the claimed range with respect to the broader range of prior art, Applicant need to show the unexpected results over the entire range which is originally disclosed.