Q) Obviousness (4.00.32a)

32. Nonobviousness of a claimed invention may be demonstrated by:

(A) producing evidence that all the beneficial results are expected based on the
teachings of the prior art references.
(B) producing evidence of the absence of a property the claimed invention would be
expected to possess based on the teachings of the prior art.
(C) producing evidence showing that unexpected results occur over less than the
entire claimed range.
(D) producing evidence showing that the unexpected properties of a claimed invention
have a significance less than equal to the expected properties.
(E) (A), (B), (C) and (D).

32. ANSWER: (B). See Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Int.
1985); MPEP 716.02(a) page 700-155 (Absence of Expected Property is Evidence of
Nonobviousness). (A) is incorrect. “Expected beneficial results are evidence of obviousness of
the claimed invention.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967),
MPEP 716.02(c). (C) is incorrect. Unexpected results must be commensurate in scope with the
claimed invention. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 298, 296 (CCPA 1980);
MPEP 716.02(d). (D) is incorrect. Evidence not showing that the unexpected properties of a
claimed invention have a significance equal to or greater than the expected properties may be
insufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ
641, 645 (CCPA 1977); MPEP 716.02(c). (E) is incorrect because (A), (C) and (D) are
incorrect.