A Non-Overlapping Prior Art Range May Still Render a Claimed Range Obvious
| April 12, 2018
In re Brandt
March 27, 2018
Before Lourie, Reyna and Taranto. Opinion by Reyna.
Summary:
Brandt’s patent application (U.S. Application No. 13/652,858) is to high density polyurethane or polyisocyanurate construction boards. The claims recite a coverboard having a density greater than 2.5 and less than 6 lbs/ft3. In rejecting the claims, the Examiner cited Griffin (US 2006/0096205), which discloses a coverboard having a density of “between 6 lbs/ft3 and 25 lbs/ft3 and preferably a density of at least 8 lbs/ft3” and stated that the claimed range would have been an obvious design choice. The Patent Trial and Appeal Board (“PTAB”) agreed with the Examiner stating that even though the prior art range does not overlap the claimed range, the difference in the ranges was “virtually negligible.” The CAFC agreed that the ranges are “so mathematically close that the examiner properly rejected the claims as prima facie obvious and affirmed the PTAB’s rejection of the claims.
Details:
Brandt’s patent application discloses high density polyurethane or polyisocyanurate construction boards for use in flat or low-slope roofing systems. Only claims 1 and 3 remain in the application directed to a covered roof and a method for applying covering to a roof. A covered roof of the application is shown below in Fig. 2.
The covered roof includes a roof deck 32, an insulation board 34, and a high-density coverboard 10. The specification explains that coverboards add integrity to the roof and protect the insulation board from damage.
Claim 1 is provided:
- A covered roof comprising:
(a) a roof deck;
(b) an insulation board including a polyurethane, a polyisocyanurate, or a mix of polyurethane and polyisocyanurate cellular structure, and said insulation board having a density that is less than 2.5 pounds per cubic foot; and
(c) a coverboard including a polyurethane, a polyisocyanurate, or a mix of polyurethane and polyisocyanurate cellular structure, said coverboard having a density greater than 2.5 pounds per cubic foot and less than 6 pounds per cubic foot and a first planar surface and a second planar surface, said first planar surface and second planar surface each having a facer positioned adjacent thereto.
The limitation at issue is the density range of the coverboard. In a final Office Action, the Examiner cited Griffin (US 2006/0096205), Letts (US 5,891,563) and Lynn (US 6,093,481) for rejecting the claims. Griffin discloses a coverboard having a polymer material core layer with a density of “between 6 lbs/ft3 and 25 lbs/ft3 and preferably a density of at least 8 lbs/ft3.” Griffin also discloses using various fillers “to reduce the cost and/or modify the properties of the high-density core layer.
Lynn discloses an insulation board having a rigid foam layer of a polymeric composition, and suitable polymers include polyurethane and polyisocyanurate. The foam layer has a “desired bulk density which is generally between 0.5 and 10, and preferably between 1 and 5 pounds per cubit foot.”
Letts discloses composite boards comprising polyisocyanurate and polyurethane materials for construction of covered roofs.
In rejecting claim 1, the Examiner stated that it would have been obvious to have “a cover board that had a density of less than 6 pounds per cubic feet as an obvious design choice and also due to margin of error by the slightest percentage.” The Patent Trial and Appeal Board (“PTAB”) affirmed the Examiner’s rejection stating that while the density range in Griffin does not overlap the claimed range, the difference in the ranges was “virtually negligible” and “could not be smaller.” The PTAB relied on Haynes International, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993), for the rule that “when the difference between the claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor.”
On appeal, Brandt argued that the PTAB did not establish a prima facie case of obviousness based on Griffin’s disclosed coverboard density range because the range does not facially overlap with the application’s claimed coverboard density range. Brandt argued that the PTAB incorrectly applied a per se rule that a prima facie case of obviousness is established whenever the differences between a prior art reference’s disclosed range and the claimed range are close.
The CAFC stated that the PTAB properly reviewed the facts before it instead of applying a per se rule. The CAFC agreed with the PTAB in that the claimed range and the range disclosed in Griffin “are so mathematically close that the examiner properly rejected the claims as prima facie obvious.” The CAFC also pointed out that Brandt conceded the “factual closeness” of the two ranges, that the difference in the ranges is “virtually negligible,” and that there is nothing in the record to support finding a meaningful difference between the ranges. The CAFC also looked to the specification of the application which discloses coverboards having a density of greater than 2.5 and less than 20 pounds per cubic foot and the fact that Brandt did not provide any evidence of unexpected results or criticality of the claimed range.
Brandt also argued that Griffin teaches away from the claimed range. Brandt stated that Griffin discloses an insulation board with a density of less than 6 pounds per cubic foot, and that to protect the insulation board from damage, the coverboard must be denser than 6 pounds per cubic foot, and thus, Griffin teaches away from making a coverboard with a density of less than 6 pounds per cubic foot. The CAFC disagreed with Brandt stating that Griffin suggests that a denser coverboard can serve to protect a less dense insulation board. The CAFC further stated that Brandt provided no evidence that one of ordinary skill in the art would have expected a coverboard with a density of just under 6 pounds per cubic foot to have different properties than a coverboard with a density of 6 pounds per cubic foot. The CAFC concluded that Brandt failed to show that Griffin “criticizes, discredits, or otherwise discourages the solution claimed.”
Comments
Even though the prior art range did not overlap the claimed range, the prior art range and the claimed range had endpoints that were so close that the claimed range was considered obvious. In this situation, evidence will need to be provided demonstrating that the claimed range is critical or provides unexpected results. Alternatively, the claims can be amended to narrow the claimed ranged or move the claimed range further away from the prior art range such that the difference in the endpoints is not considered “virtually negligible” and such that a “meaningful difference” can be demonstrated between the ranges assuming that the original disclosure supports such an amendment.
In order to support an argument of “teaching away,” it must be shown that the prior art “criticizes, discredits, or otherwise discourages the solution claimed.”
