Editing MPEP 716

<noinclude>{{MPEP Section|715|700|718}}</noinclude>

==[[MPEP 716|716 Affidavits or Declarations Traversing Rejections, 37 CFR 1.132]]== 

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37 CFR 1.132. Affidavits or declarations traversing 
rejections or objections.

When any claim of an application or a patent under reexamination 
is rejected or objected to, any evidence submitted to traverse 
the rejection or objection on a basis not otherwise provided for 
must be by way of an oath or declaration under this section.

It is the responsibility of the primary examiner to 
personally review and decide whether affidavits or 
declarations submitted under 37 CFR 1.132 for the 
purpose of traversing grounds of rejection are responsive 
to the rejection and present sufficient facts to 
overcome the rejection.

This rule sets forth the general policy of the Office 
consistently followed for a long period of time of 
receiving affidavit evidence traversing rejections or 
objections. All affidavits or declarations presented 
which do not fall within or under other specific rules 
are to be treated or considered as falling under this 
rule.

Form paragraph 7.65 or 7.66 and any of form paragraphs 
7.66.01 through 7.66.05, as appropriate, 
should be used to comment on a 37 CFR 1.132 affidavit 
or declaration.

716.01Generally Applicable Criteria[R-3]

The following criteria are applicable to all evidence 
traversing rejections submitted by applicants, including 
affidavits or declarations submitted under 37 CFR 
1.132:

(A) Timeliness.

Evidence traversing rejections must be timely or 
seasonably filed to be entered and entitled to consideration. 
In re Rothermel, 276 F.2d 393, 125 USPQ 
328 (CCPA 1960). 

Affidavits and declarations submitted under 
37 
CFR 1.132 and other evidence traversing rejections 
are considered timely if submitted:

(1)prior to a final rejection, 

(2)before appeal in an application not having a 
final rejection, 

(3)after final rejection , but before or on 
the same date of filing an appeal, upon a showing of 
good and sufficient reasons why the affidavit or other 
evidence is necessary and was not earlier presented in 
compliance with 37 CFR 1.116(e); or 

(4)after the prosecution is closed (e.g., after a 
final rejection, after appeal, or after allowance) if 
applicant files the affidavit or other evidence with a 
request for continued examination (RCE) under 37 
CFR 1.114 in a utility or plant application filed on or 
after June 8, 1995; or a continued prosecution application 
(CPA) under 37 CFR 1.53(d) in a design application.

For affidavits or declarations under 37 CFR 1.132filed after appeal, see 37 CFR 41.33(d) and MPEP § 
1206 and § 1211.03.

(B)Consideration of evidence.

Evidence traversing rejections, when timely presented, 
must be considered by the examiner whenever 
present. All entered affidavits, declarations, and other 
evidence traversing rejections are acknowledged and 
commented upon by the examiner in the next succeeding 
action. The extent of the commentary 
depends on the action taken by the examiner. Where 
an examiner holds that the evidence is sufficient to 
overcome the prima facie case, the comments should 
be consistent with the guidelines for 
statements of 
reasons for allowance. See MPEP §
 
1302.14. Where 
the evidence is insufficient to overcome the rejection, 
the examiner must specifically explain why the evidence 
is insufficient. General statements such as “the 
declaration lacks technical validity” or “the evidence 
is not commensurate with the scope of the claims” 
without an explanation supporting such findings are 
insufficient.

716.01(a)Objective Evidence of Nonobviousness 
[R-2]

OBJECTIVE EVIDENCE MUST BE CONSIDERED 
WHEN TIMELY PRESENT 

Affidavits or declarations, when timely presented, 
containing evidence of criticality or unexpected 
results, commercial success, long-felt but 
unsolved needs, failure of others, skepticism of 
experts, etc., must be considered by the examiner in 
determining the issue of obviousness of claims for 
patentability under 35 U.S.C. 103. The Court of 
Appeals for the Federal Circuit stated in Stratoflex, 
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 
218 
USPQ 871, 879 (Fed. Cir. 1983) that “evidence 
rising out of the so-called ‘secondary considerations’ 
must always when present be considered en route to a 
determination of obviousness.” Such evidence might 
give light to circumstances surrounding the origin of 
the subject matter sought to be patented. As indicia of 
obviousness or unobviousness, such evidence may 
have relevancy. Graham v. John Deere Co., 383 U.S. 
1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 
1100, 172 USPQ 126 (CCPA 1971); In re Fielder, 
471 
F.2d 640, 176 USPQ 300 (CCPA 1973). The Graham 
v. John Deere pronouncements on the relevance 
of commercial success, etc. to a determination of 
obviousness were not negated in Sakraida v. Ag Pro, 
425 
U.S. 273, 189 USPQ 449 (1979) or Anderson’s-
Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 
57, 163 USPQ 673 (1969), where reliance was placed 
upon A&P Tea Co. v. Supermarket Corp., 340 U.S. 
147, 87 USPQ 303 (1950). See Dann v. Johnston, 
425 
U.S. 219, 226 n.4, 189 USPQ 257, 261 n. 4 
(1976).

Examiners must consider comparative data in the 
specification which is intended to illustrate the 
claimed invention in reaching a conclusion with 
regard to the obviousness of the claims. In re Margolis, 
785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). 
The lack of objective evidence of nonobviousness 
does not weigh in favor of obviousness. Miles Labs. 
Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 
1123, 1129 (Fed. Cir. 1993), cert. denied, 127 L. Ed. 
232 (1994). However, where a prima facie case of 
obviousness is established, the failure to provide 
rebuttal evidence is dispositive.

716.01(b)Nexus Requirement and Evidence 
of Nonobviousness

TO BE OF PROBATIVE VALUE, ANY SECONDARY 
EVIDENCE MUST BE RELATED TO 
THE CLAIMED INVENTION (NEXUS REQUIRED)


The weight attached to evidence of secondary considerations 
by the examiner will depend upon its relevance 
to the issue of obviousness and the amount and 
nature of the evidence. Note the great reliance apparently 
placed on this type of evidence by the Supreme 
Court in upholding the patent in United States v. 
Adams, 383 U.S. 39,148 USPQ 479 (1966).

To be given substantial weight in the determination 
of obviousness or nonobviousness, evidence of secondary 
considerations must be relevant to the subject 
matter as claimed, and therefore the examiner must 
determine whether there is a nexus between the merits 
of the claimed invention and the evidence of second





 

ary considerations. Ashland Oil, Inc. v. Delta Resins 
& Refractories, Inc., 776 F.2d 281, 305 n.42, 
227 
USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert. 
denied, 475 U.S. 1017 (1986). The term “nexus” designates 
a factually and legally sufficient connection 
between the objective evidence of nonobviousness 
and the claimed invention so that the evidence is of 
probative value in the determination of nonobviousness. 
Demaco Corp. v. F. Von Langsdorff Licensing 
Ltd., 851 F.2d 1387, 7 
USPQ2d 1222 (Fed. Cir.), cert. 
denied, 488 U.S. 956 (1988).

716.01(c)Probative Value of ObjectiveEvidence [R-2]



I. TO BE OF PROBATIVE VALUE, ANY 
OBJECTIVE EVIDENCE SHOULD BE 
SUPPORTED BY ACTUAL PROOF

Objective evidence which must be factually supported 
by an appropriate affidavit or declaration to be 
of probative value includes evidence of unexpected 
results, commercial success, solution of a long-felt 
need, inoperability of the prior art, invention before 
the date of the reference, and allegations that the 
author(s) of the prior art derived the disclosed subject 
matter from the applicant. See, for example, In re De 
Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. 
Cir. 1984) (“It is well settled that unexpected results 
must be established by factual evidence.” “[A]ppellants 
have not presented any experimental data showing 
that prior heat-shrinkable articles split. Due to the 
absence of tests comparing appellant’s heat shrinkable 
articles with those of the closest prior art, we conclude 
that appellant’s assertions of unexpected results constitute 
mere argument.”). See also In re Lindner, 
457 
F.2d 506, 508, 173 
USPQ 356, 358 (CCPA 1972); 
Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & 
Inter. 1991).



II. ATTORNEY ARGUMENTS CANNOT 
TAKE THE PLACE OF EVIDENCE

The arguments of counsel cannot take the place of 
evidence in the record. In re Schulze, 346 F.2d 600, 
602, 145 
USPQ 716, 718 (CCPA 1965). Examples of 
attorney statements which are not evidence and which 
must be supported by an appropriate affidavit or declaration 
include statements regarding unexpected 
results, commercial success, solution of a long-felt 
need, inoperability of the prior art, invention before 
the date of the reference, and allegations that the 
author(s) of the prior art derived the disclosed subject 
matter from the applicant. 

See MPEP § 2145 generally for case law pertinent 
to the consideration of applicant’s rebuttal arguments. 



III. OPINION EVIDENCE

Although factual evidence is preferable to opinion 
testimony, such testimony is entitled to consideration 
and some weight so long as the opinion is not on the 
ultimate legal conclusion at issue. While an opinion as 
to a legal conclusion is not entitled to any weight, the 
underlying basis for the opinion may be persuasive. In 
re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 
1962) (expert opinion that an application meets the 
requirements of 35 U.S.C. 112 is not entitled to any 
weight; however, facts supporting a basis for deciding 
that the specification complies with 35 U.S.C. 112 are 
entitled to some weight); In re Lindell, 385 F.2d 453, 
155 USPQ 521 (CCPA 1967) (Although an affiant’s 
or declarant’s opinion on the ultimate legal issue is 
not evidence in the case, “some weight ought to be 
given to a persuasively supported statement of one 
skilled in the art on what was not obvious to him.” 
385 F.2d at 456, 155 USPQ at 524 (emphasis in original)). 


In assessing the probative value of an expert opinion, 
the examiner must consider the nature of the matter 
sought to be established, the strength of any 
opposing evidence, the interest of the expert in the 
outcome of the case, and the presence or absence of 
factual support for the expert’s opinion. Ashland Oil, 
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 
281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 
475 U.S. 1017 (1986). See also In re Oelrich, 
579 
F.2d 86, 198 USPQ 210 (CCPA 1978) (factually 
based expert opinions on the level of ordinary skill in 
the art were sufficient to rebut the prima facie case of 
obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. 
Pat. App. & Inter. 1989) (statement in publication dismissing 
the “preliminary identification of a human b-
NGF-like molecule” in the prior art, even if considered 
to be an expert opinion, was inadequate to over





 

come the rejection based on that prior art because 
there was no factual evidence supporting the statement); 
In re Carroll, 601 F.2d 1184, 202 USPQ 571 
(CCPA 1979) (expert opinion on what the prior 
art 
taught, supported by documentary evidence and 
formulated prior to the making of the claimed invention, 
received considerable deference); In re Beattie, 
974 
F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) 
(declarations of seven persons skilled in the art offering 
opinion evidence praising the merits of the 
claimed invention were found to have little value 
because of a lack of factual support); Ex parte 
George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 
1991) (conclusory statements that results were “unexpected,” 
unsupported by objective factual evidence, 
were considered but were not found to be of substantial 
evidentiary value).

Although an affidavit or declaration which states 
only conclusions may have some probative value, 
such an affidavit or declaration may have little weight 
when considered in light of all the evidence of record 
in the application. In re Brandstadter, 484 F.2d 1395, 
179 USPQ 286 (CCPA 1973).

An affidavit of an applicant as to the advantages of 
his or her claimed invention, while less persuasive 
than that of a disinterested person, cannot be disregarded 
for this reason alone. Ex parte Keyes, 
214 
USPQ 579 (Bd. App. 1982); In re McKenna, 
203 
F.2d 717, 97 USPQ 348 (CCPA 1953). 

716.01(d)Weighing Objective Evidence[R-2]

IN MAKING A FINAL DETERMINATION OF 
PATENTABILITY, EVIDENCE SUPPORTING 
PATENTABILITY MUST BE WEIGHED 
AGAINST EVIDENCE SUPPORTING PRIMA FACIE 
CASE

When an applicant timely submits evidence traversing 
a rejection, the examiner must reconsider the 
patentability of the claimed invention. The ultimate 
determination of patentability must be based on consideration 
of the entire record, by a preponderance of 
evidence, with due consideration to the persuasiveness 
of any arguments and any secondary evidence. In 
re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. 
Cir. 1992). The submission of objective evidence of 
patentability does not mandate a conclusion of patentability 
in and of itself. In re Chupp, 816 F.2d 643, 
2 
USPQ2d 1437 (Fed. Cir. 1987). Facts established by 
rebuttal evidence must be evaluated along with the 
facts on which the conclusion of a prima facie case 
was reached, not against the conclusion itself. In re 
Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 
1990). In other words, each piece of rebuttal evidence 
should not be evaluated for its ability to knockdown 
the prima facie case. All of the competent rebuttal 
evidence taken as a whole should be weighed against 
the evidence supporting the prima facie case. In re 
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 
(Fed. Cir. 1984). Although the record may establish 
evidence of secondary considerations which are indicia 
of nonobviousness, the record may also establish 
such a strong case of obviousness that the objective 
evidence of nonobviousness is not sufficient to outweigh 
the evidence of obviousness. Newell Cos. v. 
Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 
1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 
(1989); Richardson-Vicks, Inc., v. The Upjohn Co., 
122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. 
Cir. 1997) (showing of unexpected results and commercial 
success of claimed ibuprofen and pseudoephedrine 
combination in single tablet form, while 
supported by substantial evidence, held not to overcome 
strong prima facie case of obviousness). See In 
re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 
1984) for a detailed discussion of the proper roles of 
the examiner’s prima facie case and applicant’s rebuttal 
evidence in the final determination of obviousness.

If, after evaluating the evidence, the examiner is 
still not convinced that the claimed invention is patentable, 
the next Office action should include a statement 
to that effect and identify the reason(s) (e.g., 
evidence of commercial success not convincing, the 
commercial success not related to the technology, 
etc.). See Demaco Corp. v. F. Von Langsdorff Licensing 
Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), 
cert. denied, 488 U.S. 956 (1988). See also MPEP 
§
 
716.01. See MPEP § 2144.08, paragraph II.B., for 
guidance in determining whether rebuttal evidence is 
sufficient to overcome a prima facie case of obviousness.

716.02Allegations of Unexpected Results


Any differences between the claimed invention and 
the prior art may be expected to result in some differences 
in properties. The issue is whether the properties 
differ to such an extent that the difference is 
really 
unexpected. In re Merck & Co., 800 F.2d 
1091,
 
231 
USPQ 375 (Fed. Cir. 1986) (differences in 
sedative and anticholinergic effects between prior art 
and claimed antidepressants were not unexpected). In 
In re Waymouth, 499 F.2d 1273, 1276, 182 
USPQ 
290, 293 (CCPA 1974), the court held that unexpected 
results for a claimed range as compared with the 
range disclosed in the prior art had been shown by a 
demonstration of “a marked improvement, over the 
results achieved under other ratios, as to be classified 
as a difference in kind, rather than one of degree.” 
Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 
552, 560 (CCPA 1967) (differences in properties cannot 
be disregarded on the ground they are differences 
in degree rather than in kind); Ex parte Gelles, 
22 
USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) 
(“we generally consider a discussion of results in 
terms of ‘differences in degree’ as compared to ‘differences 
in kind’ . . . to have very little meaning in a 
relevant legal sense”).

716.02(a)Evidence Must Show Unexpected 
Results [R-2]

I. GREATER THAN EXPECTED RESULTS 
ARE EVIDENCE OF NONOBVIOUSNESS

“A greater than expected result is an evidentiary 
factor pertinent to the legal conclusion of obviousness 
... of the claims at issue.” In re Corkill, 711 F.2d 1496, 
226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the 
claimed combination showed an additive result when 
a diminished result would have been expected. This 
result was persuasive of nonobviousness even though 
the result was equal to that of one component alone. 
Evidence of a greater than expected result may also be 
shown by demonstrating an effect which is greater 
than the sum of each of the effects taken separately 
(i.e., demonstrating “synergism”). Merck & Co. Inc. v. 
Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). 
However, a greater than additive effect is not necessarily 
sufficient to overcome a prima facie case of 
obviousness because such an effect can either be 
expected or unexpected. Applicants must further 
show that the results were greater than those which 
would have been expected from the prior art to an 
unobvious extent, and that the results are of a significant, 
practical advantage. Ex parte The NutraSweet 
Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) 
(Evidence showing greater than additive sweetness 
resulting from the claimed mixture of saccharin and 
L-aspartyl-L-phenylalanine was not sufficient to outweigh 
the evidence of obviousness because the teachings 
of the prior art lead to a general expectation of 
greater than additive sweetening effects when using 
mixtures of synthetic sweeteners.). 



II. SUPERIORITY OF A PROPERTY 
SHARED WITH THE PRIOR ART IS EVIDENCE 
OF NONOBVIOUSNESS

Evidence of unobvious or unexpected advantageous 
properties, such as superiority in a property the 
claimed compound shares with the prior art, can rebut 
prima facie obviousness. “Evidence that a compound 
is unexpectedly superior in one of a spectrum of common 
properties . . . can be enough to rebut a prima 
facie case of obviousness.” No set number of examples 
of superiority is required. In re Chupp, 816 F.2d 
643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987) 
(Evidence showing that the claimed herbicidal compound 
was more effective than the closest prior art 
compound in controlling quackgrass and yellow nutsedge 
weeds in corn and soybean crops was sufficient 
to overcome the rejection under 35 U.S.C. 103, even 
though the specification indicated the claimed compound 
was an average performer on crops other than 
corn and soybean.). See also Ex parte A, 17 USPQ2d 
1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior 
therapeutic activity of claimed compound against 
anaerobic bacteria was sufficient to rebut prima facieobviousness even though there was no evidence that 
the compound was effective against all bacteria).

III. PRESENCE OF AN UNEXPECTED 
PROPERTY IS EVIDENCE OF NONOBVIOUSNESS


Presence of a property not possessed by the prior 
art is evidence of nonobviousness. In re Papesch, 
315 
F.2d 381, 137 USPQ 43 (CCPA 1963) (rejection 
of claims to compound structurally similar to the prior 
art compound was reversed because claimed compound 
unexpectedly possessed anti-inflammatory 
properties not possessed by the prior art compound); 
Ex parte Thumm, 132 USPQ 66 (Bd. App. 1961) 
(Appellant showed that the claimed range of 
ethylene 
diamine was effective for the purpose of producing 
“
 
‘regenerated cellulose consisting substantially 
entirely of skin’ ” whereas the prior art warned “this 
compound has ‘practically no effect.’ ”). The submission 
of evidence that a new product possesses unexpected 
properties does not necessarily require a 
conclusion that the claimed invention is nonobvious. 
In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 
1979). See the discussion of latent properties and 
additional advantages in MPEP § 2145.



IV. ABSENCE OF AN EXPECTED PROPERTY 
IS EVIDENCE OF NONOBVIOUSNESS


Absence of property which a claimed invention 
would have been expected to possess based on the 
teachings of the prior art is evidence of unobviousness. 
Ex parte Mead Johnson & Co. 227 USPQ 78 
(Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, 
claimed compounds would have been 
expected to possess beta-andrenergic blocking activity; 
the fact that claimed compounds did not possess 
such activity was an unexpected result sufficient to 
establish unobviousness within the meaning of 35 
U.S.C. 103.).

716.02(b)Burden on Applicant [R-2]

I. BURDEN ON APPLICANT TO ESTABLISH 
RESULTS ARE UNEXPECTED AND 
SIGNIFICANT

The evidence relied upon should establish “that 
the differences in results are in fact unexpected and 
unobvious and of both statistical and practical significance.” 
Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. 
Pat. App. & Inter. 1992) (Mere conclusions in appellants’ 
brief that the claimed polymer had an unexpectedly 
increased impact strength “are not entitled to the 
weight of conclusions accompanying the evidence, 
either in the specification or in a declaration.”); Ex 
parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 
1992) (Applicant alleged unexpected results with 
regard to the claimed soybean plant, however there 
was no basis for judging the practical significance of 
data with regard to maturity date, flowering date, 
flower color, or height of the plant.). See also In re 
Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 
645 
(CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 
14 
USPQ2d 1741 (Fed. Cir. 1990) as discussed in 
MPEP § 716.02(c).

II. APPLICANTS HAVE BURDEN OF 
EXPLAINING PROFFERED DATA

“[A]ppellants have the burden of explaining the 
data in any declaration they proffer as evidence of 
non-obviousness.” Ex parte Ishizaka, 24 USPQ2d 
1621, 1624 (Bd. Pat. App. & Inter. 1992). 

III. DIRECT AND INDIRECT COMPARATIVE 
TESTS ARE PROBATIVE OF NONOBVIOUSNESS 


Evidence of unexpected properties may be in the 
form of a direct or indirect comparison of the claimed 
invention with the closest prior art which is commensurate 
in scope with the claims. See In re Boesch, 
617 
F.2d 272, 205 USPQ 215 (CCPA 1980) and 
MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 
499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 
1974) and In re Fouche, 439 F.2d 1237, 1241-42, 
169 
USPQ 429, 433 (CCPA 1971) for examples of 
cases where indirect comparative testing was found 
sufficient to rebut a prima facie case of obviousness. 

The patentability of an intermediate may be established 
by unexpected properties of an end product 
“when one of ordinary skill in the art would reasonably 
ascribe to a claimed intermediate the ‘contributing 
cause’ for such an unexpectedly superior activity 
or property.” In re Magerlein, 602 F.2d 366, 373, 
202 
USPQ 473, 479 (CCPA 1979). “In order to estab
lish that the claimed intermediate is a ‘contributing 
cause’ of the unexpectedly superior activity or property 
of an end product, an applicant must identify the 
cause of the unexpectedly superior activity or property 
(compared to the prior art) in the end product and 
establish a nexus for that cause between the intermediate 
and the end product.” Id. at 479.

716.02(c)Weighing Evidence of Expected 
and Unexpected Results [R-2]

I. EVIDENCE OF UNEXPECTED AND 
EXPECTED PROPERTIES MUST BE 
WEIGHED

Evidence of unexpected results must be weighed 
against evidence supporting prima facie obviousness 
in making a final determination of the obviousness of 
the claimed invention. In re May, 574 F.2d 1082, 
197 
USPQ 601 (CCPA 1978) (Claims directed to a 
method of effecting analgesia without producing 
physical dependence by administering the levo isomer 
of a compound having a certain chemical structure 
were rejected as obvious over the prior art. Evidence 
that the compound was unexpectedly nonaddictive 
was sufficient to overcome the obviousness rejection. 
Although the compound also had the expected result 
of potent analgesia, there was evidence of record 
showing that the goal of research in this area was to 
produce an analgesic compound which was nonaddictive, 
enhancing the evidentiary value of the showing 
of nonaddictiveness as an indicia of nonobviousness.). 
See MPEP §
 
716.01(d) for guidance on weighing evidence 
submitted to traverse a rejection. 

Where the unexpected properties of a claimed 
invention are not shown to have a significance equal 
to or greater than the expected properties, the evidence 
of unexpected properties may not be sufficient 
to rebut the evidence of obviousness. In re Nolan, 
553 
F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 
1977) (Claims were directed to a display/memory 
device which was prima facie obvious over the prior 
art. The court found that a higher memory margin and 
lower operating voltage would have been expected 
properties of the claimed device, and that a higher 
memory margin appears to be the most significant 
improvement for a memory device. Although applicant 
presented evidence of unexpected properties with 
regard to lower peak discharge current and higher 
luminous efficiency, these properties were not shown 
to have a significance equal to or greater than that of 
the expected higher memory margin and lower operating 
voltage. The court held the evidence of nonobviousness 
was not sufficient to rebut the evidence of 
obviousness.); In re Eli Lilly, 902 F.2d 943, 
14 
USPQ2d 1741 (Fed. Cir. 1990) (Evidence of 
improved feed efficiency in steers was not sufficient 
to rebut prima facie case of obviousness based on 
prior art which specifically taught the use of compound 
X537A to enhance weight gain in animals 
because the evidence did not show that a significant 
aspect of the claimed invention would have been 
unexpected.). 



II. EXPECTED BENEFICIAL RESULTS 
ARE EVIDENCE OF OBVIOUSNESS 

“Expected beneficial results are evidence of obviousness 
of a claimed invention, just as unexpected 
results are evidence of unobviousness thereof.” In re 
Gershon, 372 F.2d 535, 538, 152 USPQ 602, 
604 
(CCPA 1967) (resultant decrease of dental 
enamel solubility accomplished by adding an acidic 
buffering agent to a fluoride containing dentifrice was 
expected based on the teaching of the prior art); Ex 
parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 
1989)
 
(Claims at issue were directed to a process of 
sterilizing a polyolefinic composition which contains 
an antioxidant with high-energy radiation. Although 
evidence was presented in appellant’s specification 
showing that particular antioxidants are effective, the 
Board concluded that these beneficial results would 
have been expected because one of the references 
taught a claimed antioxidant is very efficient and provides 
better results compared with other prior art antioxidants.).


716.02(d)Unexpected Results Commensurate 
in Scope With Claimed 
Invention [R-2]

Whether the unexpected results are the result of 
unexpectedly improved results or a property not 
taught by the prior art, the “objective evidence of nonobviousness 
must be commensurate in scope with the 
claims which the evidence is offered to support.” In 




 

other words, the showing of unexpected results must 
be reviewed to see if the results occur over the entire 
claimed range. In re Clemens, 622 
F.2d 1029, 1036, 
206 USPQ 289, 296 (CCPA 1980) (Claims were 
directed to a process for removing corrosion at “elevated 
temperatures” using a certain ion exchange 
resin (with the exception of claim 8 which recited a 
temperature in excess of 100C). Appellant demonstrated 
unexpected results via comparative tests with 
the prior art ion exchange resin at 110C and 130C. 
The court affirmed the rejection of claims 1-7 and 9-
10 because the term “elevated temperatures” encompassed 
temperatures as low as 60C where the prior art 
ion exchange resin was known to perform well. The 
rejection of claim 8, directed to a temperature in 
excess of 100C, was reversed.). See also In re Peterson, 
315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 
1382-85 (Fed. Cir. 2003) (data showing improved 
alloy strength with the addition of 2% rhenium did not 
evidence unexpected results for the entire claimed 
range of about 1-3% rhenium); In re Grasselli, 
713 
F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 
1983) (Claims were directed to certain catalysts containing 
an alkali metal. Evidence presented to rebut an 
obviousness rejection compared catalysts containing 
sodium with the prior art. The court held this evidence 
insufficient to rebut the prima facie case because 
experiments limited to sodium were not commensurate 
in scope with the claims.). 



I. NONOBVIOUSNESS OF A GENUS OR 
CLAIMED RANGE MAY BE SUPPORTED 
BY DATA SHOWING UNEXPECTED RESULTS 
OF A SPECIES OR NARROWER 
RANGE UNDER CERTAIN CIRCUMSTANCES


The nonobviousness of a broader claimed range can 
be supported by evidence based on unexpected results 
from testing a narrower range if one of ordinary skill 
in the art would be able to determine a trend in the 
exemplified data which would allow the artisan to 
reasonably extend the probative value thereof. In re 
Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) 
(Claims directed to mixtures of an herbicide known as 
“FENAC” with a diphenyl ether herbicide in certain 
relative proportions were rejected as prima facie obvious. 
Applicant presented evidence alleging unexpected 
results testing three species of diphenyl ether 
herbicides over limited relative proportion ranges. 
The court held that the limited number of species 
exemplified did not provide an adequate basis for 
concluding that similar results would be obtained for 
the other diphenyl ether herbicides within the scope of 
the generic claims. Claims 6-8 recited a 
FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three 
specific ethers tested. For two of the claimed ethers, 
unexpected results were demonstrated over a ratio of 
16:1 to 2:1, and the effectiveness increased as the 
ratio approached the untested region of the claimed 
range. The court held these tests were commensurate 
in scope with the claims and supported the nonobviousness 
thereof. However, for a third ether, data was 
only provided over the range of 1:1 to 2:1 where the 
effectiveness decreased to the “expected level” as it 
approached the untested region. This evidence was 
not sufficient to overcome the obviousness rejection.); 
In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 
359 
(CCPA 1972) (Evidence of nonobviousness consisted 
of comparing a single composition within the 
broad scope of the claims with the prior art. The court 
did not find the evidence sufficient to rebut the prima 
facie case of obviousness because there was “no adequate 
basis for reasonably concluding that the great 
number and variety of compositions included in the 
claims would behave in the same manner as the tested 
composition.”).



II. DEMONSTRATING CRITICALITY OF 
A CLAIMED RANGE 

To establish unexpected results over a claimed 
range, applicants should compare a sufficient number 
of tests both inside and outside the claimed range to 
show the criticality of the claimed range. In re Hill, 
284 F.2d 955, 128 USPQ 197 (CCPA 1960).

716.02(e)Comparison With Closest Prior 
Art [R-2]

An affidavit or declaration under 37 CFR 1.132must compare the claimed subject matter with the 
closest prior art to be effective to rebut a prima faciecase of obviousness. In re Burckel, 592 F.2d 1175, 
201 
USPQ 67 (CCPA 1979). “A comparison of the 
claimed invention with the disclosure of each cited 
reference to determine the number of claim limita





 

tions in common with each reference, bearing in mind 
the relative importance of particular limitations, will 
usually yield the closest single prior art reference.” In 
re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 
787 
(CCPA 1978) (emphasis in original). Where the 
comparison is not identical with the reference disclosure, 
deviations therefrom should be explained, In re 
Finley, 174 
F.2d 130, 81 USPQ 383 (CCPA 1949), 
and if not explained should be noted and evaluated, 
and if significant, explanation should be required. In 
re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 
1960) (deviations from example were inconsequential). 




I. THE CLAIMED INVENTION MAY BE 
COMPARED WITH PRIOR ART THAT IS 
CLOSER THAN THAT APPLIED BY THE 
EXAMINER

Applicants may compare the claimed invention 
with prior art that is more closely related to the invention 
than the prior art relied upon by the examiner. In 
re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 
1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 
1961) (Claims to a 13-chloro substituted compound 
were rejected as obvious over nonchlorinated analogs 
of the claimed compound. Evidence showing unexpected 
results for the claimed compound as compared 
with the 9-, 12-, and 14- chloro derivatives of the 
compound rebutted the prima facie case of obviousness 
because the compounds compared against were 
closer to the claimed invention than the prior art relied 
upon.).



II. COMPARISONS WHEN THERE ARE 
TWO EQUALLY CLOSE PRIOR ART 
REFERENCES

Showing unexpected results over one of two 
equally close prior art references will not rebut prima 
facie obviousness unless the teachings of the prior art 
references are sufficiently similar to each other that 
the testing of one showing unexpected results would 
provide the same information as to the other. In re 
Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 
1264 
(Fed. Cir. 1984) (Claimed compounds differed 
from the prior art either by the presence of a trifluoromethyl 
group instead of a chloride radical, or by the 
presence of an unsaturated ester group instead of a 
saturated ester group. Although applicant compared 
the claimed invention with the prior art compound 
containing a chloride radical, the court found this evidence 
insufficient to rebut the prima facie case of 
obviousness because the evidence did not show relative 
effectiveness over all compounds of the closest 
prior art. An applicant does not have to test all the 
compounds taught by each reference, “[h]owever, 
where an applicant tests less than all cited compounds, 
the test must be sufficient to permit a conclusion 
respecting the relative effectiveness of applicant’s 
claimed compounds and the compounds of the closest 
prior art.” Id. (quoting In re Payne, 606 F.2d 303, 
316, 203 
USPQ 245, 256 (CCPA 1979)) (emphasis in 
original).).



III. THE CLAIMED INVENTION MAY BE 
COMPARED WITH THE CLOSEST 
SUBJECT MATTER THAT EXISTS IN 
THE PRIOR ART

Although evidence of unexpected results must 
compare the claimed invention with the closest prior 
art, applicant is not required to compare the claimed 
invention with subject matter that does not exist in the 
prior art. In re Geiger, 815 
F.2d 686, 689, 2 USPQ2d 
1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring) 
(Evidence rebutted prima facie case by comparing 
claimed invention with the most relevant prior art. 
Note that the majority held the Office failed to establish 
a prima facie case of obviousness.); In re Chapman, 
357 F.2d 418, 148 USPQ 711 (CCPA 
1966)
 
(Requiring applicant to compare claimed 
invention with polymer suggested by the combination 
of references relied upon in the rejection of the 
claimed invention under 35 U.S.C. 103 “would be 
requiring comparison of the results of the invention 
with the results of the invention.” 357 F.2d at 422, 
148 
USPQ at 714.).

716.02(f)Advantages Disclosed or Inherent


The totality of the record must be considered when 
determining whether a claimed invention would have 




 

been obvious to one of ordinary skill in the art at the 
time the invention was made. Therefore, evidence and 
arguments directed to advantages not disclosed in the 
specification cannot be disregarded. In re Chu, 
66 
F.3d 292, 298-99, 36 
USPQ2d 1089, 1094-95 
(Fed. Cir. 1995) (Although the purported advantage of 
placement of a selective catalytic reduction catalyst in 
the bag retainer of an apparatus for controlling emissions 
was not disclosed in the specification, evidence 
and arguments rebutting the conclusion that such 
placement was a matter of “design choice” should 
have been considered as part of the totality of the 
record. “We have found no cases supporting the position 
that a patent applicant’s evidence or arguments 
traversing a § 103 rejection must be contained within 
the specification. There is no logical support for such 
a proposition as well, given that obviousness is determined 
by the totality of the record including, in some 
instances most significantly, the evidence and arguments 
proffered during the give-and-take of ex partepatent prosecution.” 66 F.3d at 299, 36 USPQ2d at 
1095.). See also In re Zenitz, 333 F.2d 924, 928, 
142 
USPQ 158, 161 (CCPA 1964) (evidence that 
claimed compound minimized side effects of 
hypotensive activity must be considered because this 
undisclosed property would inherently flow from disclosed 
use as tranquilizer); Ex parte Sasajima, 
212 
USPQ 103, 104 - 05 (Bd. App. 1981) (evidence 
relating to initially undisclosed relative toxicity of 
claimed pharmaceutical compound must be considered). 


The specification need not disclose proportions or 
values as critical for applicants to present evidence 
showing the proportions or values to be critical. In re 
Saunders, 444 
F.2d 599, 607, 170 USPQ 213, 
220 
(CCPA 1971).

716.02(g)Declaration or Affidavit Form

“The reason for requiring evidence in declaration or 
affidavit form is to obtain the assurances that any 
statements or representations made are correct, as provided 
by 35 U.S.C. 25 and 18 U.S.C. 1001.” Permitting 
a publication to substitute for expert testimony 
would circumvent the guarantees built into the statute. 
Ex parte Gray, 10 USPQ2d 1922, 1928 (Bd. Pat. App. 
& Inter. 1989). Publications may, however, be evidence 
of the facts in issue and should be considered to 
the extent that they are probative.

716.03Commercial Success [R-2]



I. NEXUS BETWEEN CLAIMED INVENTION 
AND EVIDENCE OF COMMERCIAL 
SUCCESS REQUIRED

An applicant who is asserting commercial success 
to support its contention of nonobviousness bears the 
burden of proof of establishing a nexus between the 
claimed invention and evidence of commercial success.


The Federal Circuit has acknowledged that applicant 
bears the burden of establishing nexus, stating:

In the ex parte process of examining a patent application, 
however, the PTO lacks the means or resources to gather 
evidence which supports or refutes the applicant’s assertion 
that the sale 
constitute commercial success. C.f. Ex 
parte Remark, 15 
USPQ2d 1498, 1503 (Bd. Pat. App. & 
Int. 1990)(evidentiary routine of shifting burdens in civil 
proceedings inappropriate in ex parte prosecution proceedings 
because examiner has no available means for 
adducing evidence). Consequently, the PTO must rely 
upon the applicant to provide hard evidence of commercial 
success.

In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 
1685, 1689 (Fed. Cir. 1996). See also In re GPAC, 57 
F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 
1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 
1671, 1676 (Fed. Cir. 1994) (Evidence of commercial 
success of articles not covered by the claims subject 
to the 35 U.S.C. 103 rejection was not probative of 
nonobviousness).

The term “nexus” designates a factually and legally 
sufficient connection between the evidence of commercial 
success and the claimed invention so that the 
evidence is of probative value in the determination of 
nonobviousness. Demaco Corp. v. F. Von Langsdorff 
Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. 
Cir. 1988).



II. COMMERCIAL SUCCESS ABROAD IS 
RELEVANT

Commercial success abroad, as well as in the 
United States, is relevant in resolving the issue of 
nonobviousness. Lindemann Maschinenfabrik GMBH 




 

v. American Hoist & Derrick Co., 730 F.2d 1452, 
221 
USPQ 481 (Fed. Cir. 1984).

716.03(a)Commercial Success Commensurate 
in Scope With Claimed 
Invention [R-2]



I. EVIDENCE OF COMMERCIAL SUCCESS 
MUST BE COMMENSURATE IN 
SCOPE WITH THE CLAIMS

Objective evidence of nonobviousness including 
commercial success must be commensurate in scope 
with the claims. In re Tiffin, 448 F.2d 791, 171 USPQ 
294 (CCPA 1971) (evidence showing commercial 
success of thermoplastic foam “cups” used in vending 
machines was not commensurate in scope with claims 
directed to thermoplastic foam “containers” broadly). 
In order to be commensurate in scope with the 
claims, the commercial success must be due to 
claimed features, and not due to unclaimed features. 
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 
229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 
959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 
1992) (Features responsible for commercial success 
were recited only in allowed dependent claims, and 
therefore the evidence of commercial success was not 
commensurate in scope with the broad claims at 
issue.).

An affidavit or declaration attributing commercial 
success to a product or process “constructed according 
to the disclosure and claims of [the] patent application” 
or other equivalent language does not 
establish a nexus between the claimed invention and 
the commercial success because there is no evidence 
that the product or process which has been sold corresponds 
to the claimed invention, or that whatever 
commercial success may have occurred is attributable 
to the product or process defined by the claims. Ex 
parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. 
App. & Inter. 1988). 



II. REQUIREMENTS WHEN CLAIMED INVENTION 
IS NOT COEXTENSIVE WITH 
COMMERCIAL PRODUCT OR PROCESS

If a particular range is claimed, applicant does not 
need to show commercial success at every point in the 
range. “Where, as here, the claims are directed to a 
combination of ranges and procedures not shown by 
the prior art, and where substantial commercial success 
is achieved at an apparently typical point within 
those ranges, and the affidavits definitely indicate that 
operation throughout the claimed ranges approximates 
that at the particular points involved in the 
commercial operation, we think the evidence as to 
commercial success is persuasive.” In re Hollingsworth, 
253 F.2d 238, 240, 117 USPQ 182, 
184 
(CCPA 1958). See also Demaco Corp. v. F. Von 
Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 
1222 (Fed. Cir. 1988) (where the commercially successful 
product or process is not coextensive with the 
claimed invention, applicant must show a legally sufficient 
relationship between the claimed feature and 
the commercial product or process). 

716.03(b)Commercial Success Derived 
From Claimed Invention [R-2]



I. COMMERCIAL SUCCESS MUST BE 
DERIVED FROM THE CLAIMED INVENTION


In considering evidence of commercial success, 
care should be taken to determine that the commercial 
success alleged is directly derived from the invention 
claimed, in a marketplace where the consumer is free 
to choose on the basis of objective principles, and that 
such success is not the result of heavy promotion or 
advertising, shift in advertising, consumption by purchasers 
normally tied to applicant or assignee, or 
other business events extraneous to the merits of the 
claimed invention, etc. In re Mageli, 470 F.2d 1380, 
176 USPQ 305 (CCPA 1973) (conclusory statements 
or opinions that increased sales were due to the merits 
of the invention are entitled to little weight); In re 
Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973). 




 

In ex parte proceedings before the Patent and 
Trademark Office, an applicant must show that the 
claimed features were responsible for the commercial 
success of an article if the evidence of nonobviousness 
is to be accorded substantial weight. See In re 
Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 
1690 
(Fed. Cir. 1996) (Inventor’s opinion as to the 
purchaser’s reason for buying the product is insufficient 
to demonstrate a nexus between the sales and the 
claimed invention.). Merely showing that there was 
commercial success of an article which embodied the 
invention is not sufficient. Ex parte Remark, 
15 
USPQ2d 1498, 1502-02 (Bd. Pat. App. & Inter. 
1990). Compare Demaco Corp. v. F. Von Langsdorff 
Licensing Ltd., 851 F.2d 1387, 7 
USPQ2d 1222 (Fed. 
Cir. 1988) (In civil litigation, a patentee does not have 
to prove that the commercial success is not due to 
other factors. “A requirement for proof of the negative 
of all imaginable contributing factors would be 
unfairly burdensome, and contrary to the ordinary 
rules of evidence.”).

See also Pentec, Inc. v. Graphic Controls Corp.,
776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (commercial 
success may have been attributable to extensive 
advertising and position as a market leader before 
the introduction of the patented product); In re 
Fielder, 471 F.2d 690, 176 
USPQ 300 (CCPA 1973) 
(success of invention could be due to recent changes 
in related technology or consumer demand; here success 
of claimed voting ballot could be due to the contemporary 
drive toward greater use of automated data 
processing techniques); EWP Corp. v. Reliance Universal, 
Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 
1985) (evidence of licensing is a secondary consideration 
which must be carefully appraised as to its evidentiary 
value because licensing programs may 
succeed for reasons unrelated to the unobviousness of 
the product or process, e.g., license is mutually beneficial 
or less expensive than defending infringement 
suits); Hybritech Inc. v. Monoclonal Antibodies, 
Inc.,
 
802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) 
(Evidence of commercial success supported a conclusion 
of nonobviousness of claims to an immunometric 
“sandwich” assay with monoclonal antibodies. Patentee’s 
assays became a market leader with 25% of the 
market within a few years. Evidence of advertising 
did not show absence of a nexus between commercial 
success and the merits of the claimed invention 
because spending 25-35% of sales on marketing was 
not inordinate (mature companies spent 17-32% of 
sales in this market), and advertising served primarily 
to make industry aware of the product because this is 
not kind of merchandise that can be sold by advertising 
hyperbole.). 



II. COMMERCIAL SUCCESS MUST 
FLOW FROM THE FUNCTIONS AND 
ADVANTAGES DISCLOSED OR INHERENT 
IN THE SPECIFICATION DESCRIPTION


To be pertinent to the issue of nonobviousness, the 
commercial success of devices falling within the 
claims of the patent must flow from the functions and 
advantages disclosed or inherent in the description in 
the specification. Furthermore, the success of an 
embodiment within the claims may not be attributable 
to improvements or modifications made by others. In 
re Vamco Machine & Tool, Inc., 752 F.2d 1564, 
224 
USPQ 617 (Fed. Cir. 1985).



III. IN DESIGN CASES, ESTABLISHMENT 
OF NEXUS IS ESPECIALLY DIFFICULT 

Establishing a nexus between commercial success 
and the claimed invention is especially difficult in 
design cases. Evidence of commercial success must 
be clearly attributable to the design to be of probative 
value, and not to brand name recognition, improved 
performance, or some other factor. Litton Systems, 
Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 
(Fed. Cir. 1984) (showing of commercial success was 
not accompanied by evidence attributing commercial 
success of Litton microwave oven to the design 
thereof).



IV. SALES FIGURES MUST BE ADEQUATELY 
DEFINED

Gross sales figures do not show commercial success 
absent evidence as to market share, Cable Electric 
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 
226 USPQ 881 (Fed. Cir. 1985), or as to the time 
period during which the product was sold, or as to 
what sales would normally be expected in the market, 




 

Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App. & 
Inter. 1988). 

716.04Long-Felt Need and Failure ofOthers [R-2]



I. THE CLAIMED INVENTION MUST 
SATISFY A LONG-FELT NEED WHICH 
WAS RECOGNIZED, PERSISTENT, AND 
NOT SOLVED BY OTHERS

Establishing long-felt need requires objective evidence 
that an art recognized problem existed in the art 
for a long period of time without solution. The relevance 
of long-felt need and the failure of others to the 
issue of obviousness depends on several factors. First, 
the need must have been a persistent one that was recognized 
by those of ordinary skill in the art. In re Gershon, 
372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 
1967) (“Since the alleged problem in this case was 
first recognized by appellants, and others apparently 
have not yet become aware of its existence, it goes 
without saying that there could not possibly be any 
evidence of either a long felt need in the . . . art for a 
solution to a problem of dubious existence or failure 
of others skilled in the art who unsuccessfully 
attempted to solve a problem of which they were not 
aware.”); Orthopedic Equipment Co., Inc. v. All 
Orthopedic Appliances, Inc., 707 F.2d 1376, 
217 
USPQ 1281 (Fed. Cir. 1983) (Although the 
claimed invention achieved the desirable result of 
reducing inventories, there was no evidence of any 
prior unsuccessful attempts to do so.).

Second, the long-felt need must not have been satisfied 
by another before the invention by applicant. 
Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 
768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) 
(Although at one time there was a long-felt need for a 
“do-it-yourself” window shade material which was 
adjustable without the use of tools, a prior art product 
fulfilled the need by using a scored plastic material 
which could be torn. “[O]nce another supplied the key 
element, there was no long-felt need or, indeed, a 
problem to be solved”.) 

Third, the invention must in fact satisfy the long-
felt need. In re Cavanagh, 436 F.2d 491, 168 USPQ 
466 (CCPA 1971).



II. LONG-FELT NEED IS MEASURED 
FROM THE DATE A PROBLEM IS IDENTIFIED 
AND EFFORTS ARE MADE TO 
SOLVE IT

Long-felt need is analyzed as of the date the problem 
is identified and articulated, and there is evidence 
of efforts to solve that problem, not as of the date of 
the most pertinent prior art references. Texas Instruments 
Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 
1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).



III. OTHER FACTORS CONTRIBUTING TO 
THE PRESENCE OF A LONG-FELT 
NEED MUST BE CONSIDERED

The failure to solve a long-felt need may be due to 
factors such as lack of interest or lack of appreciation 
of an invention’s potential or marketability rather than 
want of technical know-how. Scully Signal Co. v. 
Electronics Corp. of America, 570 F.2d 355, 196 
USPQ 657 (1st. Cir. 1977).

See also Environmental Designs, Ltd. v. Union Oil 
Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 
869 
(Fed. Cir. 1983) (presence of legislative regulations 
for controlling sulfur dioxide emissions did not 
militate against existence of long-felt need to reduce 
the sulfur content in the air); In re Tiffin, 443 F.2d 344, 
170 USPQ 88 (CCPA 1971) (fact that affidavit supporting 
contention of fulfillment of a long-felt need 
was sworn by a licensee adds to the weight to be 
accorded the affidavit, as long as there is a bona fidelicensing agreement entered into at arm’s length).

716.05Skepticism of Experts

“Expressions of disbelief by experts constitute 
strong evidence of nonobviousness.” Environmental 
Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 
698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing 
United States v. Adams, 383 U.S. 39, 52, 148 USPQ 
479, 483-484 (1966)) (The patented process converted 
all the sulfur compounds in a certain effluent 
gas stream to hydrogen sulfide, and thereafter treated 
the resulting effluent for removal of hydrogen sulfide. 
Before learning of the patented process, chemical 
experts, aware of earlier failed efforts to reduce the 
sulfur content of effluent gas streams, were of the 




 

opinion that reducing sulfur compounds to hydrogen 
sulfide would not adequately solve the problem.).

“The skepticism of an expert, expressed before 
these inventors proved him wrong, is entitled to fair 
evidentiary weight, . . . as are the five to six years of 
research that preceded the claimed invention.” In re 
Dow Chemical Co., 837 
F.2d 469, 5 USPQ2d 1529 
(Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 
822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony 
that the invention met with initial incredulity 
and skepticism of experts was sufficient to rebut the 
prima facie case of obviousness based on the prior 
art). 

716.06Copying

Another form of secondary evidence which may be 
presented by applicants during prosecution of an 
application, but which is more often presented during 
litigation, is evidence that competitors in the marketplace 
are copying the invention instead of using the 
prior art. However, more than the mere fact of copying 
is necessary to make that action significant 
because copying may be attributable to other factors 
such as a lack of concern for patent property or contempt 
for the patentees ability to enforce the patent. 
Cable Electric Products, Inc. v. Genmark, Inc., 
770 
F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985). Evidence 
of copying was persuasive of nonobviousness 
when an alleged infringer tried for a substantial length 
of time to design a product or process similar to the 
claimed invention, but failed and then copied the 
claimed invention instead. Dow Chem. Co. v. American 
Cyanamid Co., 837 F.2d 469, 2 USPQ2d 1350 
(Fed. Cir. 1987). Alleged copying is not persuasive of 
nonobviousness when the copy is not identical to the 
claimed product, and the other manufacturer had not 
expended great effort to develop its own solution. 
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 
227 USPQ 766 (Fed. Cir. 1985). See also Vandenberg 
v. Dairy Equipment Co., 740 
F.2d 1560, 1568, 
224 
USPQ 195, 199 (Fed. Cir. 1984) (evidence of 
copying not found persuasive of nonobviousness) and 
Panduit Corp. v. Dennison Manufacturing Co., 774 
F.2d 1082, 1098-99, 227 USPQ 337, 348, 349 (Fed. 
Cir. 1985), vacated on other grounds, 475 U.S. 809, 
229 
USPQ 478 (1986), on remand, 810 F.2d 1561, 
1 
USPQ2d 1593 (Fed. Cir. 1987) (evidence of copying 
found persuasive of nonobviousness where admitted 
infringer failed to satisfactorily produce a solution 
after 10 years of effort and expense).

716.07Inoperability of References

Since every patent is presumed valid (35 U.S.C. 
282), and since that presumption includes the presumption 
of operability (Metropolitan Eng. Co. v. 
Coe, 78 F.2d 199, 25 USPQ 216 (D.C.Cir. 
1935),examiners should not express any opinion on 
the operability of a patent. Affidavits or declarations 
attacking the operability of a patent cited as a reference 
must rebut the presumption of operability by a 
preponderance of the evidence. In re Sasse, 629 F.2d 
675, 207 USPQ 107 (CCPA 1980). 

Further, since in a patent it is presumed that a process 
if used by one skilled in the art will produce the 
product or result described therein, such presumption 
is not overcome by a mere showing that it is possible 
to operate within the disclosure without obtaining the 
alleged product. In re Weber, 405 F.2d 1403, 
160 
USPQ 549 (CCPA 1969). It is to be presumed 
also that skilled workers would as a matter of course, 
if they do not immediately obtain desired results, 
make 
certain experiments and adaptations, within 
the 
skill 
of the competent worker. The failures of 
experimenters who have no interest in succeeding 
should not be accorded great weight. In re Michalek, 
162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 
179 F.2d 998, 84 USPQ 478 (CCPA 1950). 

Where the affidavit or declaration presented asserts 
inoperability in features of the reference which are not 
relied upon, the reference is still effective as to other 
features which are operative. In re Shepherd, 172 F.2d 
560, 80 
USPQ 495 (CCPA 1949).

Where the affidavit or declaration presented asserts 
that the reference relied upon is inoperative, the 
claims represented by applicant must distinguish from 
the alleged inoperative reference disclosure. In re 
Crosby, 157 F.2d 198, 71 
USPQ 73 (CCPA 1946). See 
also In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 
(Fed. Cir. 1994) (lack of diagrams, flow charts, and 
other details in the prior art references did not render 
them nonenabling in view of the fact that applicant’s 
own specification failed to provide such detailed 
information, and that one skilled in the art would have 
known how to implement the features of the references). 





 

If a patent teaches or suggests the claimed invention, 
an affidavit or declaration by patentee that he or 
she did not intend the disclosed invention to be used 
as claimed by applicant is immaterial. In re Pio, 
217 
F.2d 956, 104 USPQ 177 (CCPA 1954). Compare 
In re Yale, 434 F.2d 66, 168 
USPQ 46 (CCPA 1970) 
(Correspondence from a co-author of a literature article 
confirming that the article misidentified a compound 
through a typographical error that would have 
been obvious to one of ordinary skill in the art was 
persuasive evidence that the erroneously typed compound 
was not put in the possession of the public.).

716.08Utility and Operability of Applicant’s 
Disclosure

See MPEP § 2107.02, for guidance on when it is 
proper to require evidence of utility or operativeness, 
and how to evaluate any evidence which is submitted 
to overcome a rejection under 35 U.S.C. 101 for lack 
of utility. See MPEP § 2107 - § 2107.03 generally for 
utility examination guidelines and an overview of 
legal precedent relevant to the utility requirement of 
35 
U.S.C. 101.

716.09Sufficiency of Disclosure

See MPEP § 2164 - § 2164.08(c) for guidance in 
determining whether the specification provides an 
enabling disclosure in compliance with 35 U.S.C. 
112, first paragraph.

Once the examiner has established a prima faciecase of lack of enablement, the burden falls on the 
applicant to present persuasive arguments, supported 
by suitable proofs where necessary, that one skilled in 
the art would have been able to make and use the 
claimed invention using the disclosure as a guide. In 
re Brandstadter, 484 F.2d 1395, 179 
USPQ 286 
(CCPA 1973). Evidence to supplement a specification 
which on its face appears deficient under 35 
U.S.C. 
112 must establish that the information which must be 
read into the specification to make it complete would 
have been known to those of ordinary skill in the art. 
In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 
1981) (copies of patent specifications which had been 
opened for inspection in Rhodesia, Panama, and Luxembourg 
prior to the U.S. filing date of the applicant 
were not sufficient to overcome a rejection for lack of 
enablement under 35 
U.S.C. 112, first paragraph).

Affidavits or declarations presented to show that 
the disclosure of an application is sufficient to one 
skilled in the art are not acceptable to establish facts 
which the specification itself should recite. In re 
Buchner, 929 F.2d 660, 18 
USPQ2d 1331 (Fed. Cir. 
1991) (Expert described how he would construct elements 
necessary to the claimed invention whose construction 
was not described in the application or the 
prior art; this was not sufficient to demonstrate that 
such construction was well-known to those of ordinary 
skill in the art.); In re Smyth, 189 F.2d 982, 
90 
USPQ 106 (CCPA 1951).

Affidavits or declarations purporting to explain the 
disclosure or to interpret the disclosure of a pending 
application are usually not considered. In re 
Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 
1944). But see Glaser v. Strickland, 220 USPQ 446 
(Bd. Pat. Int. 1983) which reexamines the rationale on 
which In re Oppenauer was based in light of the Federal 
Rules of Evidence. The Board stated as a general 
proposition “Opinion testimony which merely purports 
to state that a claim or count, is ‘disclosed’ in an 
application involved in an interference . . . should not 
be given any weight. Opinion testimony which purports 
to state that a particular feature or limitation of a 
claim or count is disclosed in an application involved 
in an interference and which explains the underlying 
factual basis for the opinion may be helpful and can 
be admitted. The weight to which the latter testimony 
may be entitled must be evaluated strictly on a case-
by-case basis.” 

716.10Attribution

Under certain circumstances an affidavit or declaration 
may be submitted which attempts to attribute 
an 
activity, a reference or part of a reference to the 
applicant. If successful, the activity or the reference is 
no longer applicable. When subject matter, disclosed 
but not claimed in a patent application filed jointly by 
S and another, is claimed in a later application filed by 
S, the joint patent or joint patent application publication 
is a valid reference available as prior art under 
35 
U.S.C. 102(a), (e), or (f) unless overcome by affidavit 
or declaration under 37 CFR 1.131 showing 
prior invention (see MPEP § 715) or an unequivocal 
declaration by S under 37 CFR 1.132 that he or she 
conceived or invented the subject matter disclosed in 
the patent or published application. Disclaimer by the 




 

other patentee or other applicant of the published 
application should not be required but, if submitted, 
may be accepted by the examiner.

Where there is a published article identifying the 
authorship (MPEP § 715.01(c)) or a patent or an 
application publication identifying the inventorship 
(MPEP § 715.01(a)) that discloses subject matter 
being claimed in an application undergoing examination, 
the designation of authorship or inventorship 
does not raise a presumption of inventorship with 
respect to the subject matter disclosed in the article or 
with respect to the subject matter disclosed but not 
claimed in the patent or published application so as to 
justify a rejection under 35 U.S.C. 102(f). 

However, it is incumbent upon the inventors named 
in the application, in response to an inquiry regarding 
the appropriate inventorship under 35 U.S.C. 102(f)
or to rebut a rejection under 35 U.S.C. 102(a) or (e), 
to provide a satisfactory showing by way of affidavit 
under 37 CFR 1.132 that the inventorship of the application 
is correct in that the reference discloses subject 
matter derived from the applicant rather than invented 
by the author, patentee, or applicant of the published 
application notwithstanding the authorship of the article 
or the inventorship of the patent or published 
application. In re Katz, 687 F.2d 450, 455, 215 USPQ 
14, 18 
(CCPA 1982) (inquiry is appropriate to clarify 
any ambiguity created by an article regarding inventorship 
and it is then incumbent upon the applicant to 
provide “a satisfactory showing that would lead to a 
reasonable conclusion that [applicant] is the ... inventor” 
of the subject matter disclosed in the article and 
claimed in the application).

An uncontradicted “unequivocal statement” from 
the applicant regarding the subject matter disclosed in 
an article, patent, or published application will be 
accepted as establishing inventorship. In re DeBaun, 
687 F.2d 459, 463, 214 USPQ 933, 936 
(CCPA 1982). 
However, a statement by the applicants regarding 
their inventorship in view of an article, patent, or published 
application may not be sufficient where there is 
evidence to the contrary. Ex parte Kroger, 218 USPQ 
370 (Bd. App. 1982) (a rejection under 35 U.S.C. 
102(f) was affirmed notwithstanding declarations by 
the alleged actual inventors as to their inventorship in 
view of a nonapplicant author submitting a letter 
declaring the author’s inventorship); In re Carreira, 
532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (disclaiming 
declarations from patentees were directed at 
the generic invention and not at the claimed species, 
hence no need to consider derivation of the subject 
matter).

A successful 37 CFR 1.132 affidavit or declaration 
establishing derivation by the author, patentee, or 
applicant of the published application of a first reference 
does not enable an applicant to step into the 
shoes of that author, patentee, or applicant of the published 
application in regard to its date of publication 
so as to defeat a later second reference. In re Costello, 
717 
F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 
1983). 

EXAMPLES

The following examples demonstrate the application 
of an attribution affidavit or declaration.

Example 1

During the search the examiner finds a reference 
fully describing the claimed invention. The applicant 
is the author or patentee and it was published 
or patented less than one year prior to the filing 
date of the application. The reference cannot be 
used against applicant since it does not satisfy the 
1-year time requirement of 35 
U.S.C. 102(b).

Example 2

Same facts as above, but the author or patentee is 
an entity different from applicant. Since the entities 
are different, the reference is prior art under 
35 
U.S.C. 102(a) or (e).

In the situation described in Example 2, an affidavit 
under 37 CFR 1.132 may be submitted to show that 
the relevant portions of the reference originated with 
or were obtained from applicant. Thus the affidavit 
attempts to convert the fact situation from that 
described in Example 2 to the situation described in 
Example 1.