Prima facie case of obviousness is not established solely because end point of claimed range is close to disclosed range
Yoshiya Nakamura | July 31, 2014
In re Rajen M. Patel
July 16, 2014
Panel: O’Malley and Hughes. Opinion by O’Malley.
PTAB affirmed Examiner’s rejections of Applicants’ claims reciting a range limitation of weight percent of a polymer component, as being obvious over a cited reference because it discloses a range whose upper limit is very close to the claimed lower limit. Applicants appealed from the PTO decision and argued before CAFC that the PTAB erred in finding a prima facie case of obviousness where the amounts do not overlap. CAFC agreed with the Applicants and distinguished this case from its previous cases where range overlapping at least to some degree was required to find obviousness.
出願クレームは、ポリマーの量（26 wt%以上）を記載し、先行技術はポリマーの量（25 wt%以下）を開示していた。その差は僅か1％ほどである。米国特許庁審査官はこの場合、数値は重複していないが、非常に近接しているので、それだけで自明性の存在が一応証明され（prima facie case of obviousness）、したがって、出願人が非自明性（たとえば予期せぬ効果）を証明しなければ特許されないと判断した。同特許庁審判部はこの結論を維持した。この決定を不服として出願人はCAFCに上訴し、クレームの数値範囲に「近い」という理由だけで即座に自明であるとした特許庁の判断は間違いであると主張した。CAFCは出願人の意見に同意し、特許庁の判断を覆した。本件は、先行技術の数値がクレームの数値と重複しておらず、クレームの数値へ増量するという教示が先行技術にはないことに着目し、単に数値が「近い」というだけで自明であるとしてはいけないとの判断である。特許庁のガイドラインは、数値範囲が重複していなくても、同様の特性が予期できる程度に「近い」といえる場合は一応の自明性があると説明しているが、本件はこの基準の適用範囲を制限した判決であると考えられる。
Applicants claimed a nonwoven material. The invention specifically relates to a nonwoven material having superior abrasion resistance and softness characteristics, which is useful for bandaging materials and diapers, etc (Application No. 11/578,646).
Representative claim 1 recites:
1. A nonwoven material comprised of fibers having a surface comprising a polyethylene blend, 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 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/α-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/α-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.
An Examiner rejected the claims by asserting that it would be obvious over Maugans (US 6,015,617). Most of the claims were rejected based on Maugans alone.
The dispute between the Examiner and Applicants involves issues of whether Maugans teaches two numerical range limitations of “from 26 weight percent to 80 weight percent” of the polymer component and “a density of from 0.915 to 0.950 grams/centimeter3.” This post focuses on only the former limitation by the weight percent range of the polymer component.
Maugans discloses a polymer having improved bond performance for fibers and fabrics. It teaches that the polymer includes from 0.5 percent to 25 weight percent of a homogenous ethylene/α-olefin interpolymer (as a first polymer). Maugans further discloses that in preferred embodiments, their fabrics have adequate fabric strength and spinnability as compared with those of fabrics prepared from unmodified second polymer, meaning that increasing the amount of the first polymer component would have negative effects.
Before PTAB, Applicants have argued that a prima facie case of obviousness is not established because Maugans discloses that the amount of polymer component must be 25 wt% or less, which does not overlap or abut with the claimed lower limit (26 wt% or more). Applicants have argued that since a prima facie case of obviousness is not established, it is not required to show unexpected results to overcome Maugans.
PTAB agreed with the Examiner’s rejections, by stating: “[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.”
PTAB supported its conclusion by citing three CAFC decisions: In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985), and In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990), particularly, citing a holding in Titanium Metals Corp: “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties” (the same statement is in MPEP 2144.05.I.).
CAFC disagreed with PTAB, and agreed “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.”
CAFC emphasized that there must be a motivation or reason to increase the upper limit of the polymer component disclosed in the prior art to the claimed lower limit even where the limits are very close. It was noted by the court:
[d]epending on the technology, even small differences in formulations can be meaningful. Where differences clearly exist and there is no evidence that they are either not meaningful or one of skill in the art would know to discard the limits set by the prior art, proximity alone is not enough to establish a prima facie case of obviousness. 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.
CAFC also explained how this case can be distinguished from its previous decisions relied on in the PTAB decision, where obviousness was found based on disclosed amounts.
The following is Author’s summary of facts and conclusions in the cited cases and the present case.
Regarding PTABs’ reliance on the quote in In re Peterson from Titanium Metals Corp 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,” CAFC noted: “that statement was dicta; all of the ranges in In re Peterson overlapped at least to some degree.”
Although MPEP 2144.05.I. clearly notes: “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties,” the CAFC decision confirms that this is not a per se rule of obviousness, leaving a more room for consideration based on factual findings of significance or meaning of ranges disclosed in prior art. Even if a gap between a claimed amount and disclosed amount is 1% or so, the burden of proof remains with the PTO, especially where a cited reference indicates a preference away from the claimed limit.