In re Soni

Pravin L. Soni and three other applicants (plaintiffs) jointly filed a patent application claiming conductive polymer compositions. The patent specification stated that the claimed composition had significantly improved physical and electrical properties, compared to compositions with lower molecular weights, results which Soni claimed were valuable and surprising. The statement was supported by data from a number of comparative tests performed on the claimed invention and a similar compound with a lower molecular weight. Noting a five-fold increase in one of the measures, and better performance according to others, the specification concluded the improved measures were much greater than predicted. An examiner issued a final rejection of all claims as obvious in light of two references alone or in combination with five others among other grounds. After considering Soni’s argument that the examiner ignored the evidence of unexpected results disclosed in his specification, the Patent and Trademark Office Board of Patent Appeals and Interferences (the board) (defendant) concluded the evidence was unsupported by factual data and was thus conclusory. Because unsupported conclusions are inadequate to outweigh strong cases of obviousness, the board affirmed the rejection. Soni appealed, conceding that the claimed invention was prima facie obvious under 35 U.S.C. § 103 in view of the prior art cited by the patent office.