In 2017, the Federal Circuit made clear in in re Stepan that an obviousness determination requires both “that a skilled artisan would have been motivated to combine the teachings of the prior art ... and that the skilled artisan would have had a reasonable expectation of success in doing so.” The decision was in the context of the PTAB relying on a skilled artisan achieving the claimed invention through routine optimization.

One way to undercut an Examiner's case of obviousness, therefore, is to point to the lack of evidence establishing that expectation of success, and/or evidence pointing toward a lack of such an expectation. This latter approach can rely on declaration evidence submitted under 37 CFR 1.132.

One can find examples of such approaches using, for example, bigpatentdata.com and searching the PAIR data for 1.132 declarations. These declarations are used for a variety of things, and thus without much effort various examples establishing a lack of an expectation of success can be identified easily.

One example is in 14/343,221, where, in a response after non-final, the applicant explains that “[a] person of ordinary skill in the art would not have a reasonable expectation of success in view of the disclosures of Honda and Hanash to make the claimed antibody. This is not just attorney argument, but supported by the attached 37 C.F.R. 1.132 Declaration.” While this case resulted in an allowance, do not get lulled into the idea that every time you file a declaration with evidence undercutting a reasonable expectation of success that you will receive an allowance on the next action. In fact, when relying on such evidence on appeal, the PTAB will often work overtime to find a hole in the declaration so that the evidence can be brushed aside. For example, the PTAB likes to find ways to assert that the declaration evidence is not commensurate in scope with the claims, or is attacking the wrong reference, or somehow is inconsistent with some other statements in the specification. Nevertheless, in the right situation, declaration evidence pertinent to the issue of an expectation of success can be helpful before examiners and on appeal.