• Services
  • Attorneys
  • Media & Insights
  • Online Payment
Results may vary depending on your particular facts and legal circumstances. No aspect of this advertisement has been approved by the Supreme Court of New Jersey. A description of the selection methodology can be found here.
  • Services
  • Attorneys
  • Media & Insights
  • About Us
  • Delivering Value
  • Diversity & Inclusion
  • Meritas
  • Contact Us
  • Online Payment
    A
    Alternative Dispute ResolutionAntitrust & Trade RegulationAppellate Practice
    B
    Banking & Financial ServicesBankruptcy, Creditors’ Rights, and Financial RestructuringBeer LawBusiness Law
    C
    Cannabis LawConstruction LawCooperative and Condominium Law (Co-op & Condo)Criminal Defense
    E
    Economic Development LawElder Care & Special Needs LawElectronic Discovery ("E-Discovery")Environmental LawERISA & Employee BenefitsEstate Planning and Administration & Wealth PreservationExecutive Compensation and Employment Strategies
    F
    Food, Beverage & HospitalityFranchise Law
    H
    Health Care & Life SciencesHealth Care ProvidersHigher EducationHospitals and Health Networks
    I
    ImmigrationInsurance CoverageIntellectual PropertyIntellectual Property Litigation, Arbitration, and Dispute ResolutionIntellectual Property Portfolio Strategy, Management & LicensingInternational BusinessInternet Law
    L
    Labor & EmploymentLiquor Law, Licensing, Manufacturing, and DistributionLitigation
    M
    Media Law & Creative Economy PracticeMergers & AcquisitionsMunicipal Law
    N
    Non-Profit Law
    P
    Patent Preparation and ProsecutionPharmaceutical / Medical Devices / Pharma ServicesProducts and Consumer Liability DefenseProfessional LiabilityPublic Utilities
    R
    Real Estate, Finance, and Land Use
    S
    SecuritiesSolar Energy
    T
    TaxationTelecommunicationsTrademark & Copyright Protection & Enforcement
    V
    Venture Tech & Emerging Growth Companies
    W
    White Collar Investigations & DefenseWorkers’ Compensation
    • New Jersey
    • New York
    • Pennsylvania
    • Blogs
    • Articles
    • Podcasts
    • COVID-19 Resources

    Categories

    Copyright Copyright Infringement Copyright Licensing Copyright Office Copyright|Copyright Infringement|Intellectual Property Copyright|Copyright Infringement|Intellectual Property|Social Media Copyright|Copyright Infringement|Social Media Copyright|Intellectual Property Copyright|Intellectual Property|Social Media|Trademarks Court Decisions Double Patenting>Same Invention Double Patenting>Terminal Disclaimers Drafting Patents Drafting Patents>Claims Drafting Patents>Claims>Written Description False Advertising Federal Circuit Food & Beverage Food & Beverage|Intellectual Property Food & Beverage|Labeling|Legislation Food & Beverage|Trade Dress Food & Beverage|Trademark Infringement|Trademark Office|Trademark Registration|Trademarks Food & Beverage|Trademark Infringement|Trademarks|Unfair Competition Food & Beverage|Trademark Office|Trademark Registration|Trademarks|TTAB Food & Beverage|Trademark Office|Trademark Registration|TTAB Food & Beverage|Trademark Office|Trademarks Food & Beverage|Trademark Office|Trademarks|TTAB Food & Beverage|Trademark Registration|Trademarks Food & Beverage|Trademarks General In The News Intellectual Property Labeling Lanham Act Legislation Licensing Navigating the Patent Office Navigating the Patent Office>Examiner Interviews Obviousness/Inventive Step>Prima Facie Obviousness Patent Patent Eligibility Privacy Right of Publicity Social Media Supreme Court Trade Dress Trademark Infringement Trademark Infringement|Trademark Office|Trademark Registration|Trademarks Trademark Infringement|Trademark Registration|Trademarks Trademark Infringement|Trademarks Trademark Office Trademark Office|Trademark Registration|Trademarks Trademark Office|Trademark Registration|Trademarks|TTAB Trademark Office|Trademarks Trademark Registration Trademark Registration|Trademarks Trademark Registration|Trademarks|TTAB Trademark Registration|TTAB Trademarks TTAB Uncategorized Unfair Competition
    Blogs > More Than Your Mark® > “Commensurate in Scope with the...
    NM PR
    Visit Profile

    “Commensurate in Scope with the Claims”: Misphrased?

    “Commensurate in Scope with the Claims”: Misphrased?

    If you’ve been prosecuting patents for any significant length of time, you’ve probably been hit with the objection that your data, while surprising and unexpected, are not “commensurate in scope with your claims.” Maybe you have some understanding of what this phrase means. Maybe you have some idea what the patent examiner thinks it means. MPEP § 716.02(d) provides: “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 (emphasis added).”

    Simple enough, but does this really make sense?

    Consider the following claim:

    1.      A material selected from the group consisting of AB, CD, EF … and YZ.

    The patent examiner has found prior art references showing A, B, C, and D individually and also has adequately explained the motivation of a person skilled in the art to combine A and B to form AB and to combine C and D to form CD. In your judgment, this is sufficient to establish a prima facie case of the obviousness of AB and CD. Accordingly, you provide a declaration by one of the inventors that the patent examiner agrees proves that the combinations AB and CD both exhibit surprising and unexpected results beyond what could have been expected given the individual prior art teachings of A, B, C, and D.

    However, instead of receiving the anticipated Notice of Allowance, you receive a final rejection, the objection is that while the data support the allowance of AB and CD, you’ve not shown, consistent with MPEP § 716.02(d), that any of the other claimed combinations, i.e., EF … YZ, show the patentable advance. In short, your data submission is not commensurate in scope with your claims.

    The “commensurate in scope with the claims” objection is so ingrained in us all that you might well be tempted to advise the client either to submit additional data or to narrow the claims.

    However, looking at the situation logically and objectively, why should you be compelled to produce data to support the patentability of embodiments EF … YZ when there has been no allegation that these combinations are unpatentable in the first place? The answer is, you shouldn’t.

    To make this point, I’ve often split my claim 1 into two claims, 1A and 1B:

    1A.      A material selected from the group consisting of AB and CD.

    1B.      A material selected from the group consisting of EF … and YZ.

    I’d argue that claim 1A is patentable because of the proffered data showing surprising and unexpected results exhibited by AB and CD.

    I’d argue that claim 1B is patentable because the patent examiner has failed to make a prima facie case of the obviousness of any combinations EF ... YZ.

    I would then make this additional argument: how can claim 1 be unpatentable when it simply combines two patentable pieces, 1A and 1B, into a single claim?

    By this time, I can usually get the patent examiner to agree that claim 1 is patentable without the need to submit additional data for combinations EF … YZ and, as a result, claims 1A and 1B have served their purpose and can be canceled.

    Exactly this result can be supported by In re Tiffin, 171 U.S.P.Q. 294 (C.C.P.A. 1971), which is often credited as an origin of the “commensurate in scope” requirement. The claims at issue in Tiffin were drawn broadly to “containers,” whereas applicant had shown commercial success only for “cups.” The Court handed down an initial decision allowing both cups and containers claims. However, the Solicitor sought and gained a rehearing on the issue. On rehearing, the Court sided with the Solicitor, explaining:

    “As the solicitor now points out, it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. Here, appellants' claims 1-3 and 10-16 are too broad in the sense of 35 U.S.C. § 103 in that they are inclusive of the subject matter which is prima facie obvious and concerning which appellants have not rebutted the Patent Office's prima facie case. [Citations omitted, plain italics in original, and bold, underlining added.]”

    Thus, the problem was applicant’s failure to rebut the full scope of the prima facie case of obviousness as established by the patent examiner. Containers were prima facie obvious in view of the prior art, but applicant had submitted rebuttal proofs for cups only; consequently, the patentability of the entire genus of containers had not been established.

    In my example above, in which the prima facie case of obviousness extended to combinations AB and CD only, but not EF … YZ, applicant’s submission of data rebutting the prima facie case with respect to AB and CD extinguished the prima facie case of obviousness in its entirety, and contrary to Tiffin, did not create a situation where the claims were still “inclusive of subject matter which is prima facie obvious and concerning which applicant had not rebutted the Patent Office's prima facie case.”

    Viewed in this light, the requirement of “commensurate in scope with the claims” is most certainly misphrased. A more accurate phraseology might be “commensurate in scope with the prior art”; i.e., the data submitted must be reasonably commensurate with the scope of the prima facie case of obviousness made out and, therefore, need not extend to claim embodiments for which no prima facie case of obviousness has been made out.

    If you have any questions about this post or other patent issues, contact me at kgbriscoe@nmmlaw.com.

    NM PR
    Visit Profile

    Related Posts

    Patents and Trade Secrets – to Disclose or Conceal? Patenting Recipes – Recipe for Disaster or Sweet Reward Common Issues in Patent and Trademark Litigation

    Share

    Tags

    #commensurate in scope #data #objection #obviousness #patent examiner #patents #prima facie

    Helpful links

    • About Us
    • News
    • Services
    • Blogs
    • Attorneys
    • Articles
    • (COVID-19)
    • Award Methodology
    • Events
    • Join our Team
    Connect
    Online Payment

    Connect with Us

    • LinkedIn
    • Facebook
    • Twitter
    • Instagram
    • Youtube

    Join our growing team

    We are looking for quality attorneys to help us do more for our clients. At Norris McLaughlin, each attorney has the same opportunity to succeed whether you’re at the beginning of a career or pinnacle of the profession.

    Learn More

    Subscribe to our content

    Receive timely legal information delivered to your inbox

    This field is for validation purposes and should be left unchanged.
    © , Norris McLaughlin, P.A., All Rights Reserved. Attorney Advertising.
    VIEW OUR DISCLAIMER,  TERMS OF USE,  AND PRIVACY POLICY

    We use cookies to ensure that we give you the best experience on our website. If you continue to use this site we will assume you consent to our cookie policy. Learn more