Patel, obviousness of ranges and unexpected results

We are all used to seeing the Supreme Court reverse the CAFC. This posting is about a case where the Examiner rejected the claims as obvious according to §103(a), the PTAB upheld the Examiner’s decision and the CAFC reversed the PTAB.

The case at issue is 11/578646 by Patel et al. The PTAB decision can be found in PAIR and the CAFC decision can be found here. Neither the PTAB nor the CAFC marked their decision as being precedential.

Claim 1 is directed towards:

A nonwoven material comprised of fibers having a surface comprising a polyethylene, said fibers being selected from the group consisting of monocomponent fibers, bicomponent fibers or mixtures thereof, said nonwoven material having a fuzz/abrasion less than or equal to 0.0214(BW)+0.2714 mg/cm² when the material comprises monocomponent fibers and said nonwoven material having a fuzz/abrasion less than or equal to 0.0071 (BW)+0.4071 mg/cm² when the material consists of bicomponent fibers, wherein the fibers are from 0.1 to 50 denier and comprise a polymer blend, wherein the polymer blend comprises:

a. from 26 weight percent to 80 weight percent (by weight of the polymer blend) of a first polymer which is a homogeneous ethylene/a-olefin interpolymer having:

i. a melt index of from about 1 to about 1000 grams/10 minutes, and

ii. a density of from 0.915 to 0.950 grams/centimeter³, and

b. from 74 to 20 percent by weight of a second polymer which is an ethylene homopolymer or an ethylene/a-olefin interpolymer having:

i. a melt index of from about 1 to about 1000 grams/10 minutes, and ii. a density which is at least 0.01 grams/centimeter³ greater than the density of the first polymer

 wherein the overall melt index of the polymer blend is greater than 18 grams/10 min.

The two underlined features were at issue.

As regards the feature a density of from 0.915 to 0.950 grams/centimeter³ the Examiner cited Maugans (US 6,015,617) in view of Ouederni (US 2003/0003830). The Examiner was un-persuaded by Applicant’s arguments that their example 11 show unexpected results for the claimed density which were sufficient to establish non-obviousness of the feature even though the claimed ranges overlapped with the 0.850 to 0.950 range taught by Maugans .

As regards the feature from 26 weight percent to 80 weight percent the Examiner cited Maugans which disclosed a range of 0.5 to 25 weight percent and, in the Examiner’s opinion “...a patently distinguishable difference between 25 and 26 weight percentage does not exist…it would be obvious to one having ordinary skill in the art to vary the amount …to achieve a desirable balance of properties.”

The PTAB agreed with the Examiner on both points.

Specifically, the PTAB held that:

“Appellants have not adequately explained why the alleged improvement shown therein is considered significant and unexpected relative to the closest prior art, Maugans.” And that “… Appellants failed to show: (1) “why the evidence relied upon is reasonably commensurate in the scope with the claims” and (2) “why this limited evidence is representative of the scope of protection sought by the claimed invention covering various compositions having densities outside of that specified in the Example [11].” for the density feature; and that

“[s]ince 25 wt. % and 26 wt. % are so close in value, a person of ordinary skill in the art would have reasonably expected a blend comprising either 25 wt. % or 26 wt. % of the homogeneously branched component to have the same or similar properties.” for the density feature.

The CAFC chose to deal with the weight percentage issue first:

“The key issue is whether the Maugans reference, disclosing a range of 0.5 to 25 weight percent, can establish a prima facie case of obviousness over the claimed range of 26 to 80 weight percent of the first polymer. We agree with Appellants that the examiner failed to establish a prima facie case of obviousness because the ranges do not overlap and the prior art does not teach that a broader range would be appropriate.”

This conclusion was based upon what the CAFC perceived as misinterpretation (by the PTAB) of its own precedents concerning obviousness of ranges in three different decisions.

The court summarized how those precedents should properly be interpreted:

In In re Woodruff, this court affirmed an obviousness rejection by the Board of Patent Appeals and Interferences (“BPAI”) for a process for inhibiting the growth of fungi. 919 F.2d at 1575. The process discussed maintaining a modified gaseous atmosphere at specific percentages by volume. Id. at 1575–76. While the majority of the ranges were clearly found in the prior art, the prior art reference disclosed “about 1-5%” carbon monoxide whereas the claim limitation required “>5-25%” carbon monoxide. Id. at 1576. The court found that the prior art range and the claimed range overlapped because the statement “about 1-5% does allow for concentrations slightly above 5%,” which established a prima facie case of obviousness. Id. at 1577 (emphasis added). Consequently, the court in In re Woodruff only addressed a prima facie case of obviousness for ranges that overlap. In re Woodruff says nothing about a situation where no overlap in ranges exists.

In Titanium Metals, claim 3 disclosed an alloy having 0.3% Molybdenum (“Mo”) and 0.8% Nickel (“Ni”). The court found that claim obvious over prior art which disclosed two alloys having the following characteristics: (1) 0.25% Mo with 0.75% Ni, and (2) 0.31% Mo with 0.94% Ni. Titanium Metals, 778 F.2d at 782–83. While it is true that, in finding the claim obvious, the court stated that “[t]he proportions are so close that prima facie one skilled in the art would have expected them to have the same

properties,” id. at 783, the facts of the case put that comment in context. The claims and prior art in Titanium Metals disclosed single points, not ranges, and the claimed amount fell within the two single amounts disclosed by the prior art. In other words, the prior art establishes two measures—which were themselves not far apart—and the claim simply adopted a measure between those end points. Titanium Metals is thus a case much like the range cases where the claimed amount falls directly within the established prior art range. Here, unlike in Titanium Metals, the claimed range unquestionably falls outside the range disclosed by the prior art.

In In re Peterson, the Court affirmed the finding of obviousness regarding the composition of a nickel-based single-crystal superalloy. 315 F.3d at 1327. The prior art disclosed ranges that either fully or at least partially overlapped with the claimed ranges. It is well-established that a prima facie case of obviousness exists when the claimed and prior art ranges overlap. See id. at 1329. While the court in In re Peterson cited the proposition from Titanium Metals that “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one

skilled in the art would have expected them to have the same properties,” id. at 1329 (citing Titanium Metals, 778 F.2d at 783) (emphasis omitted), that statement was dicta; all of the ranges in In re Peterson overlapped at least to some degree.

While a rejection based on ranges approaching each other might well be appropriate where there is a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied, the PTAB cites to no such evidence. And, Appellees are not able to cite to any evidence of such a teaching before us. Indeed, if anything, Maugans emphasizes limiting the amount of the first polymer, as increasing such amount negatively affects the spinnability and fabric strength. See Maugans at col. 12 ll. 47–58 (“fabrics prepared from fibers of the invention will exhibit a fabric strength which is at least 5 percent, more preferably at least 10 percent, and most preferably at least 20 percent of fabric prepared from fiber prepared form unmodified second polymer” and “fibers of the invention will exhibit a spinnability (maximum draw rpms) which is no more than 25 percent less than, more preferably no more than 15 percent less than the spinnability (maximum draw rpms) of fiber prepared from unmodified second polymer.”).

The court summarized their discussion of the weight percentage issue by saying:

We find that the PTAB erred in finding that the examiner established a prima facie case of obviousness solely because the claimed range and the prior art range approach one another. Consequently, we need not address whether the Maugans reference affirmatively teaches away from the claimed invention.

The court the turned its attention to the density feature.

In this case the Appellant had conceded that the claimed range of 0.915–0.950 g/cm³ falls within the prior art range of 0.855–0.950 g/cm³. The issue was whether Appellants provided sufficient evidence of unexpected results to support a finding of non-obviousness over the prior art.

The CAFC took the opportunity to remind us that: “When an applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must ‘show that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997)”

In this case, the PTAB had concluded “Appellants have not adequately explained why the

alleged improvement shown therein is considered significant and unexpected relative to the closest prior art, Maugans.” And the CAFC agreed using the substantial evidence rule.

The end result was that although claims 37 and 44 were found obvious according to § 103, claims 1-8, 30-36, 38, 40-43, 45, 46, 49 and 50 were deemed non-obvious and the case was remanded.

The take home lesson here is that it can be helpful to argue multiple claim features. Even if only one of your arguments is successful, that can be sufficient to establish §103 non-obviousness.

As a footnote, it is interesting that neither the PTAB nor the CAFC referred to the Supreme Court’s decision in KSR. By reading between the lines, one can infer that there was no teaching, suggestion or motivation in Maugans to extend the weight percentage from 25% to 26%. Could this be part of a larger trend? Since the decision is non- precedential, perhaps the answer is no.