“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.