Appeal No. 2003-1991 8
Application No. 09/412,258
unusual and unexpected results are identical at all dosage levels. Indeed Taylor in his 1992
publication, Exhibit D, concludes that 3-isobutyl GABA prevents tonic extensor seizures
from low intensity electroshock when given intravenously with an ED50 dose of 2.1 mg/kg.
See pages 105-106. Accordingly, the effects of isobutyl GABA relied upon by the
appellants to show unusual or unexpected results were well known in 1992, years prior to
the effective filing date of the instant application.
As we stated supra, a requirement of evidence to rebut a prima facie case of
obviousness is that the difference actually obtained be unexpected by one skilled in the art
at the time of the invention. The corollary to that requirement has been explicitly stated
by the courts. When the results obtained by appellants, are expected beneficial results,
they are evidence of obviousness, just as unexpected results are evidence of unobviousness.
In re Gershon, 372 F.2d 535, 537, 152 USPQ 602, 604 (CCPA 1967). See also In
re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975)(“[e]xpected
beneficial results are evidence of obviousness of a claimed invention just as unexpected
beneficial results are evidence of unobviousness”). Accord In re Skoll, 523 F.2d 1392,
1396-97, 187 USPQ 481, 484 (CCPA 1975).
Accordingly, unlike the situation of In re Magerlein, wherein the appellants
established the unexpected superiority of the end product, on the record before us, the
evidence discloses that the results obtained by the appellants for the end product is
expected beneficial results known at the time of the invention. Therefore, the results do
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