In Re Pravin L. Soni, Ceinwen Rowlands, Larry Edwards and Mark Wartenberg

As the majority observes, the question presented by Soni’s appeal is a narrow and factual one: namely, “whether the data in Soni’s patent specification show that the compositions of the claims exhibit unexpectedly improved physical and electrical properties compared to lower molecular weight compositions.” Slip op. at 749. I am unable to answer this controlling question in the affirmative. But, in reversing the Board’s decision, the majority overturns a well-settled facet of the law of rejections for obviousness by eliminating altogether one of the two requirements of a successful rebuttal…