Practical Considerations for Using Evidence of Unexpected Synergistic Results in Patent Prosecution

Author: Kevin Tamm, Managing Editor, University of Cincinnati Law Review

I. Distinguishing a Patent Over the Prior Art with Unexpected Synergistic Results

The Federal Circuit and USPTO have set a high bar for an inventor to overcome a finding of obviousness in a patent application by using evidence of unexpected synergistic results.  Synergy by itself is not enough to overcome an examiner’s prima facie case for obviousness; instead, the synergy must be unexpected or surprising and the applicant must show that it could not have been predicted based upon the cited references.  Broad disclosures of synergy in the prior art weigh toward a finding of obviousness.  Additionally, evidence of synergy over a broad range of compositions or components in the prior art, or in the application at issue, weighs toward a finding of obviousness.  To show unexpected results, an applicant must provide a side-by-side comparison of the claimed invention with the closest prior art and explain why the results would have been unexpected by one of ordinary skill in the art.[1]

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