Post-Issuance Experimentation As Evidence of Unexpected Results

A patent may not be obtained ... if the ... subject matter [sought to be patented] as a whole would have been obvious at the time the invention was made." 35 U.S.C. '103(a). Establishment of <i>prima facie</i> obviousness requires satisfaction of three separate criteria. First, there must be some suggestion or motivation to one of ordinary skill in the art to modify a reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Third, the prior art reference (or references when combined) must teach or suggest each and every limitation in the claim under examination. <i>In re Vaeck</i>, 947 F.2d 488, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991). With respect to chemical compounds, a <i>prima facie</i> case of obviousness may be made based on structural similarity of the claimed compound to other known compounds since "one skilled in the art [would be motivated] to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." <i>In re Payne</i>, 606 F.2d 303, 313 (CCPA 1979).

18 minute read June 28, 2005 at 09:18 AM

By

Gerard A. Messina And Aaron Grunberger