A party rebutting an assertion of obviousness may present comparative test data showing that
the claimed compounds possesses unexpectedly improved properties or properties not possessed prior
art compounds. In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). As set
forth in In re Soni:
One way for a patent applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some
superior property or advantage that a person of ordinary skill in the relevant art would
have found surprising or unexpected. The basic principle
behind this rule is straightforward -- that which would have been surprising to a person
of ordinary skill in a particular art would not have been obvious. The principle applies
most often to the less predictable fields, such as chemistry, where minor changes in a
product or process may yield substantially different results.
54 F.3d at 750, 34 USPQ2d at 1687. Moreover, given a presumption of similar properties for similar
compositions, substantially improved properties are ipso facto unexpected. 54 F.3d at 751, 34
USPQ2d at 1688. Unexpected results must be shown to be unexpected compared with the closest
prior art. In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991). Furthermore, in order to establish unexpected results for a claimed invention, objective
evidence of nonobviousness must be commensurate in scope with the claims which the evidence is
offered to support. In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296
(CCPA 1980).
Maienfisch has submitted evidence to demonstrate that their presently claimed
1,3,5-oxadiazines have unexpectedly superior insecticidal properties as compared to the closest
comparable compounds recited in JP ‘943. Specifically, Maienfisch relies upon a Declaration of Dr.
Hubert Buholzer, dated July 28, 1998 (SX 2008), as well as a Declaration of Alfred Rindlisbacher,
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