## Facts

- Inventors filed a patent application claiming melt-processed electrically conductive polymer compositions using a non-crosslinked polymer with molecular weight greater than 150,000 and a dispersed particulate conductive filler.
- The examiner finally rejected multiple claims as obvious under 35 U.S.C. § 103 based on prior art combinations.
- On appeal to the Board of Patent Appeals and Interferences, the applicants conceded the prior art established a prima facie case of obviousness but argued unexpected results rebutted it.
- The specification included comparative testing between polyethylene compositions using molecular weights of 203,000 (claimed range) and 148,000 (outside the claimed threshold).
- The comparative data reported at least a fifty-fold increase in tensile strength and at least a five-fold increase in peel strength for the higher-molecular-weight composition, along with improved resistivity and recovery behavior.
- The specification stated the improvements were significantly greater than would have been predicted from the molecular-weight difference.
- The Board affirmed the rejection, treating the specification’s unexpected-results discussion as unsupported and conclusory.

## Issues

1. Whether comparative data and assertions of unexpected results contained in the patent specification can constitute competent rebuttal evidence sufficient to overcome a conceded prima facie case of obviousness under 35 U.S.C. § 103.
2. Whether the Board clearly erred by dismissing the specification’s quantitative comparative results as “conclusory” without a reasoned basis or contrary evidence.

## Decision

- The Federal Circuit reversed the Board’s decision.
- The court held the PTO’s conclusion that unexpected results were not shown was clearly erroneous.
- The court determined the specification’s quantitative comparative data and accompanying explanation of unexpectedness were evidence the PTO was required to consider.
- The reversal had the effect of overturning the § 103 obviousness rejection of the appealed claims.

## Legal Principles

- Rebuttal evidence relevant to nonobviousness, including unexpected results, may be presented in the patent specification and must be considered in the § 103 analysis.
- Conclusory attorney argument alone may be insufficient, but specific quantitative comparative data in the application can support a finding of unexpected results.
- When an applicant presents substantial comparative improvements and states they were unexpected, that showing can rebut a prima facie case absent contrary evidence or a persuasive technical explanation from the PTO.
- The PTO may not selectively rely on portions of the record supporting unpatentability while disregarding specification-based rebuttal evidence without a reasoned basis.

## Conclusion

The Federal Circuit held that quantitative comparative testing and asserted unexpectedness in the specification can rebut a prima facie case of obviousness, and that the PTO commits reversible error when it dismisses such evidence as conclusory without substantive rebuttal.


In re Soni, 54 F.3d 746 (Fed. Cir. 1995)