In Re Pravin L. Soni, Ceinwen Rowlands, Larry Edwards and Mark Wartenberg

54 F.3d 746, 34 U.S.P.Q. 2d (BNA) 1684, 1995 U.S. App. LEXIS 10380, 1995 WL 274386

Opinions

Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge MICHEL.

LOURIE, Circuit Judge.

Pravin L. Soni, Ceinwen Rowlands, Larry Edwards, and Mark Wartenberg (collectively “Soni”) appeal from the decision of the U.S. Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences affirming the examiner’s final rejection of claims 1-6, 8-12, and 21 of application Serial No. 07/462,893, entitled “Conductive Polymer Compositions,” as unpatentable on the ground of obviousness under 35 U.S.C. § 103 (1988). Because the PTO’s conclusion that unexpected results were not shown was clearly erroneous, we reverse.

BACKGROUND

The claimed invention relates to conductive polymer compositions. Claim 1 is illustrative:

1. A melt-processed composition which comprises

(i) an organic polymer which is not eros-slinked and has a molecular weight which is greater than 150,000 when measured by high temperature gel permeation chromatography, and

(ii) a particulate conductive filler which is dispersed in the polymer and which is present in [an] amount sufficient to render the composition electrically conductive (emphasis added).

Soni’s patent specification states that the claimed compositions have significantly improved physical and electrical properties compared to compositions using polymers having a molecular weight below 150,000. To illustrate this point, the specification describes a number of tests comparing the properties of a composition of the invention composed of polyethylene having a molecular weight of 203,000 with a comparative composition composed of polyethylene having a molecular weight of 148,000. The data show at least a fifty-fold increase in tensile strength for the higher molecular weight composition compared to the lower molecular weight composition. The data also show at least a fivefold increase in peel strength as well as improved resistivity and recovery behavior properties. From these data, the specification concludes that “[t]he tensile, peel, resistivity behavior and recovery tests show significantly improved properties for a polymer having a molecular [weight] of 203,000 compared to one having a molecular weight of 148,000, which are much greater than would have been predicted given the difference in their molecular weights.”

During prosecution, the examiner rejected the claims over the following prior art:

Rosenzweig et al. U.S. Patent 4,775,501

Soni et al. U.S. Patent 4,921,648

Lunk et al. U.S. Patent 4,624,990

Taylor U.S. Patent 4,426,638

Wu et al. U.S. Patent 4,228,118

Capaccio et al. U.S. Patent 4,268,470

Ward et al. U.S. Patent 3,962,205

The examiner first rejected claims 1-6, 8-12, and 21 under 35 U.S.C. §§ 102 or 103 as being anticipated by or obvious from the disclosures of the Rosenzweig or Soni patents. The examiner took the position that each of these references discloses all of the limitations recited in the claims. Second, the examiner rejected claims 1-6, 8-12, and 21 under § 103 as being unpatentable over Lunk or Taylor, taken alone or in combination with Rosenzweig, Soni, Wu, Capaccio, or Ward. The examiner asserted that each of Lunk and Taylor discloses a melt-processed composition comprising an organic polymer and a particulate conductive filler. While acknowledging that Lunk and Taylor are silent as to the molecular weight of the polymers used, the examiner argued that a person of ordinary skill in the art would have selected a polymer having a molecular weight within the claimed range. Wu, Capaccio, and Ward were cited for their disclosures of melt-proeessable organic polymers having molecular weights within the claimed range.

. The rejections were subsequently made final, and Soni appealed to the Board. The Board affirmed the first rejection on the ground of § 103, but reversed it with respect to § 102. The Board found that the parent application commonly shared by Soni and Rosenzweig¹ did not disclose the specific molecular weight limitation found in the claims and thus the claims were not anticipated by Soni or Rosenzweig under § 102(a) or (e). The Board found, however, that

[i]f higher molecular weight melt-processable polymers were not available at the time the parent application was filed, they certainly became available by the time of appellants’ invention, as evidenced by appellants’ acknowledgements in the present specification, i.e., that the compositions in the appealed claims are based on commercially available polymers. It is also acknowledged on this record that one of ordinary skill in the relevant art would have expected higher molecular weight polymers to result in better composition properties. See the present specification at page 17, lines 22 to 28. On this record, it would have constituted nothing more than the exercise of ordinary skill for one to have selected commercially available higher molecular weight polymers to use in the melt-processes of the references to obtain advantageous physical properties in the resulting product (emphasis added).

In response to Soni’s argument that its specification describes unexpected results, the Board stated:

In the referenced portion of the present specification, it is also asserted that the improvement in properties resulting from the use of the specific class of molecular weights set forth in appellants’ claims was “much greater than would have been predicted.” However, this record appears to be devoid of any evidence to support that conclusion. Thus, to whatever extent it may be considered that there is any evidence of unobviousness, it is clearly insufficient to outweigh the evidence of obviousness of record (emphasis added).

The Board also affirmed the § 103 rejection based on Lunk or Taylor, taken alone or in combination with the other references cited by the examiner. The Board found that Lunk would have anticipated the claimed invention except that the reference does not explicitly disclose polymers having a molecular weight greater than 150,000. The Board further found that

selection of a specific molecular weight from within the very high molecular weight class disclosed by Lunk would have been obvious to one of ordinary skill in the relevant art, and there is no convincing evidence that unobvious results are associated with the specific molecular weight limitation in question. Similarly, there is no evidence that substitution of other well-known melt-processable polymers in the Lunk composition produces unobvious results.

The Board noted that this analysis applied equally to the Taylor reference and found the remaining references essentially superfluous in view of Lunk or Taylor.

Soni requested reconsideration of the Board’s decision, arguing that the Board ignored the evidence of unexpected results disclosed in the specification. On reconsideration, the Board adhered to its decision:

That which appellants characterize as “evidence” consists of conclusory statements made in the original specification concerning unpredictable differences, which statements are unsupported by any factual data. In a given case, this could conceivably be adequate; however, where as here the evidence of obviousness found in the references is quite strong, this type of unsupported conclusion is inadequate to outweigh it (emphasis added).

Soni now appeals.

DISCUSSION

We review de novo the PTO’s ultimate conclusion of obviousness, a question of law, although its underlying factual findings are reviewed for clear error. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.Cir.1991); In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). The question whether an applicant made a showing of unexpected results is one of fact, subject to the clearly erroneous standard of review.

On appeal, Soni concedes that the prior art relied upon establishes a prima facie case of obviousness. Thus, the sole question for resolution is whether Soni carried its burden of rebutting the prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.Cir.1993) (prima facie case of obviousness shifts burden to applicant to come forward with rebuttal evidence or argument).

The references cited describe relevant compositions containing polyethylene and a conductive filler. We need not focus on the specific disclosures of the references since it is conceded that the correctness of the rejections boils down to the question whether the data in Soni’s patent specification show that, the compositions of the claims exhibit unexpectedly improved physical and electrical properties compared to lower molecular -weight compositions.

Soni argues that it overcame the prima facie case of obviousness because its patent specification contains data showing that the claimed compositions do exhibit unexpectedly improved properties. Soni further argues that the Board ignored these data, pointing to the Board’s statements that Soni’s claim of unexpected results was “unsupported by any factual evidence” and that “this record is devoid of any evidence.”

In reply, the PTO maintains that Soni has not met its burden of rebutting the prima facie case of obviousness. Specifically, the PTO contends that the Board did in fact consider the data in Soni’s specification, but found the data unpersuasive. The PTO points out that Soni’s statement that the results were unexpected is conclusory and that the record lacks any evidence or explanation why the results were unexpected. The Board, the PTO notes, found that Soni had acknowledged that improved properties would have been expected for higher molecular weight compositions. The PTO contends that, because Soni did not prove, or even state, how much improvement would have been expected, there is no factual basis for analyzing whether Soni’s data show unexpected results. Thus, in the PTO’s view, the comparative data are entitled to little probative weight. The PTO also contends that any showing of unexpected results made by Soni was not commensurate in scope with the appealed claims.

The patent statute provides that “[a] person shall be entitled to a patent unless” any of the § 102 or 103 bars applies. 35 U.S.C. § 102. When a chemical composition is claimed, a prima facie case of obviousness under § 103 may be established by the PTO’s citation of a reference to a similar composition, the presumption being that similar compositions have similar properties. See In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed.Cir.1990) (en banc) (“structural similarity between claimed and prior art subject matter, ... where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness”), cert. denied, 500 U.S. 904, 111 S.Ct. 1682, 114 L.Ed.2d 77 (1991). One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of “unexpected results,” i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward — that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious. The principle applies most often to the less predictable fields, such as chemistry, where minor changes in a product or process may yield substantially different results.

Consistent with the rule that all evidence of nonobviousness must be considered when assessing patentability, the PTO must consider comparative data in the specification in determining whether the claimed invention provides unexpected results. In re Margolis, 785 F.2d 1029, 1031, 228 USPQ 940, 941-42 (Fed.Cir.1986). However, “[i]t is well settled that unexpected results must be established by factual evidence. Mere argument or eonclusory statements in the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.Cir.1984); see also In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978) (“Mere lawyer’s arguments and eonclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.”); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“[M]ere eonclusory statements in the specification ... are entitled to little weight when the Patent Office questions the efficacy of those statements.”).

Here, Soni’s specification contains more than mere argument or eonclusory statements; it contains specific data indicating improved properties. It also states that the improved properties provided by the claimed compositions “are much greater than would have been predicted given the difference in their molecular weights.” The Board inferred from this statement a concession that a person of ordinary skill in the art would have expected a composition using a higher molecular weight polymer to yield better results than one using a lower molecular weight polymer. Further, while the Board accepted this part of the statement as true, it declined to accept the statement’s conclusion that the improvements were much greater than would have been predicted. We think the Board read too much into the statement in concluding that it amounted to a concession that one skilled in the art would have expected improved properties. One can just as readily interpret the statement as meaning that one would not have expected the improvement that was realized, given the molecular weights, not that the improvement was expected. Moreover, it is illogical for the Board, without reason, to accept as true only that part of Soni’s statement which supports the PTO’s theory of unpatentability, while rejecting the remainder of the statement.

The Board further stated that it could have taken judicial notice of the fact that higher molecular weight polymers would have been expected to tolerate higher filler loadings without degradation in properties and that it could have taken notice of the fact that it is the polymer per se that primarily determines the mechanical properties of a filled polymer composition. To support the latter principle, the Board cited a technical dictionary, which states that “[t]he polymer matrix primarily determines the mechanical properties of the composite system.” The dictionary does not state, however, that higher molecular weight polymers form improved conductive polymer compositions. Thus, we find the Board’s reliance on judicial notice to be no more convincing than its reliance on Soni’s alleged admission.

Mere improvement in properties does not always suffice to show unexpected results. In our view, however, when an applicant demonstrates substantially improved results, as Soni did here, and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary. Soni, who owed the PTO a duty of candor, made such a showing here. The PTO has not provided any persuasive basis to question Soni’s comparative data and assertion that the demonstrated results were unexpected. Thus, we are persuaded that the Board’s finding that Soni did not establish unexpected results is clearly erroneous.

The cases cited by the dissent are not to the contrary. Neither De Blauwe, nor Wood, nor Lindner requires a showing of unexpectedness separate from a showing of significant differences in result. Nor does Merck, which involved compositions understood to differ only in “a matter of degree.” Those are not the facts here, where substantially improved properties were shown. Given a presumption of similar properties for similar compositions, substantially improved properties are ipso facto unexpected. The difficulty postulated by the dissent in distinguishing substantial from insubstantial improvement is no greater than the PTO and the courts have encountered, successfully, for many years in making judgments on the question of obviousness. It is not unworkable; it is simply the stuff of adjudication. Nor does it change established burdens of proof. The PTO here established a prima facie case, the applicant responded to it with a showing of data, and the PTO made an inadequate challenge to the adequacy of that showing.

On appeal before us the PTO raises for the first time the argument that Soni’s showing of unexpected results is not . commensurate in scope with the claims. See In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979) (“The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.”). Here, claim 1 broadly encompasses all melt-processed compositions comprising a polymer having a molecular weight greater than 150,000. The proof of unexpected results, on the other hand, is limited to a single species within the claimed range, polyethylene having a molecular weight of 203,000. The same deficiency is said to apply to the dependent claims. Claim 6, for example, recites a composition in which the polymer is polyethylene having a molecular weight of 200,000 to 400,000.

We will not consider this argument for the first time on appeal. See De Blauwe, 736 F.2d at 705 n. 7, 222 USPQ at 196 n. 7 (“[T]he Solicitor cannot raise a new ground of rejection or apply a new rationale to support a rejection in appeals from decisions of the board.”) (emphasis added). Since the only rejection made and argued in the PTO was based on the asserted failure of the data concerning the 203,000 molecular weight composition to evidence unexpected properties, and we have concluded that that rejec-. tion was erroneous, we must reverse the rejection of all of the claims. If, following return of this case to the PTO, the PTO considers that a new obviousness rejection' should be made of claims broad enough to encompass compositions that have not been held in this decision to have unexpected superiority, it is free to do so.

CONCLUSION

The Board’s decision affirming the final rejection of claims 1-6, 8-12, and 21 is

REVERSED.

1

. The Rosenzweig and Soni patents are both continuations-in-part of U.S. patent application Serial No. 596,761, filed April 4, 1984, now abandoned.