Hi Roger,
In addition to responses by Edlyn & Peter, the information from the two lin=
ks from MPEP might help you better understand the rationale behind the U.S =
patent law for your innocuous question regarding ranges. Please do consult =
a patent attorney for more information.
Hope it helps,
Yateen
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2131_03.htm#sect21=
31.03
2131.03 Anticipation of Ranges [R-6] - 2100 Patentability
2131.03 Anticipation of Ranges [R-6]
I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE A=
NTICIPATES THE RANGE
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several =
compositions, the claim is 'anticipated' if one of them is in the prior art=
." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1=
985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 196=
2)) (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nic=
kel (Ni) and 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a=
Russian article on Ti-Mo-Ni alloys because the graph contained an actual d=
ata point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni and =
this composition was within the claimed range of compositions.).
II. PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED =
RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "=
SUFFICIENT SPECIFICITY"
When the prior art discloses a range which touches or overlaps the claimed =
range, but no specific examples falling within the claimed range are disclo=
sed, a case by case determination must be made as to anticipation. In order=
to anticipate the claims, the claimed subject matter must be disclosed in =
the reference with "sufficient specificity to constitute an anticipation un=
der the statute." What constitutes a "sufficient specificity" is fact depen=
dent. If the claims are directed to a narrow range, and the reference teach=
es a broad range, depending on the other facts of the case, it may be reaso=
nable to conclude that the narrow range is not disclosed with "sufficient s=
pecificity" to constitute an anticipation of the claims. See, e.g., Atofina=
v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. C=
ir. 2006) wherein the court held that a reference temperature range of 100-=
500 degrees C did not describe the claimed range of 330-450 degrees C with =
sufficient specificity to be anticipatory. Further, while there was a sligh=
t overlap between the reference's preferred range (150-350 degrees C) and t=
he claimed range, that overlap was not sufficient for anticipation. "[T]he =
disclosure of a range is no more a disclosure of the end points of the rang=
e than it is each of the intermediate points." Id. at 1000, 78 USPQ2d at 14=
24. Any evidence of unexpected results within the narrow range may also ren=
der the claims unobvious. The question of "sufficient specificity" is simil=
ar to that of "clearly envisaging" a species from a generic teaching. See M=
PEP § 2131.02 <http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2=
131_02.htm#sect2131.02> . A 35 U.S.C. 102 <http://www.uspto.gov/web/offices=
/pac/mpep/documents/appxl_35_U_S_C_102.htm#usc35s102> / 103 <http://www.usp=
to.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm#usc35s103> co=
mbination rejection is permitted if it is unclear if the reference teaches =
the range with "sufficient specificity." The examiner must, in this case, p=
rovide reasons for anticipation as well as a *>reasoned< statement regardin=
g obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) (=
expanded Board). For a discussion of the obviousness of ranges see MPEP §=
2144.05 <http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2144_05.=
htm#sect2144.05> .
III. PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT=
DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIM=
ED RANGE
"[A]nticipation under § 102 can be found only when the reference disclose=
s exactly what is claimed and that where there are differences between the =
reference disclosure and the claim, the rejection must be based on § 103 =
which takes differences into account." Titanium Metals Corp. v. Banner, 778=
F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims to titanium (Ti) alloy wit=
h 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were not anticipated by, althou=
gh they were held obvious over, a graph in a Russian article on Ti-Mo-Ni al=
loys in which the graph contained an actual data point corresponding to a T=
i alloy containing 0.25% Mo and 0.75% Ni.).
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2144_05.htm#sect21=
44.05
2144.05 Obviousness of Ranges [R-5] - 2100 Patentability
2144.05 Obviousness of Ranges [R-5]
See MPEP § 2131.03 <http://www.uspto.gov/web/offices/pac/mpep/documents/2=
100_2131_03.htm#sect2131.03> for case law pertaining to rejections based o=
n the anticipation of ranges under 35 U.S.C. 102 <http://www.uspto.gov/web/=
offices/pac/mpep/documents/appxl_35_U_S_C_102.htm#usc35s102> and 35 U.S.C.=
102 <http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_10=
2.htm#usc35s102> / 103 <http://www.uspto.gov/web/offices/pac/mpep/documents=
/appxl_35_U_S_C_103.htm#usc35s103> .
I. OVERLAP OF RANGES
In the case where the claimed ranges "overlap or lie inside ranges disclose=
d by the prior art" a prima facie case of obviousness exists. In re Werthei=
m, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16=
USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concent=
rations of "about 1-5%" while the claim was limited to "more than 5%." The =
court held that "about 1-5%" allowed for concentrations slightly above 5% t=
hus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ=
2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective=
layer as falling within a range of "50 to 100 Angstroms" considered prima =
facie obvious in view of prior art reference teaching that "for suitable pr=
otection, the thickness of the protective layer should be not less than abo=
ut 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'su=
itable protection' is provided if the protective layer is 'about' 100 Angst=
roms thick, [the prior art reference] directly teaches the use of a thickne=
ss within [applicant's] claimed range."). Similarly, a prima facie case of =
obviousness exists where the claimed ranges and prior art ranges do not ove=
rlap but are close enough that one skilled in the art would have expected t=
hem to have the same properties. Titanium Metals Corp. of America v. Banner=
, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejec=
tion of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenu=
m, up to 0.1% iron, balance titanium" as obvious over a reference disclosin=
g alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nick=
el, 0.31% molybdenum, balance titanium.).
"[A] prior art reference that discloses a range encompassing a somewhat nar=
rower claimed range is sufficient to establish a prima facie case of obviou=
sness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. =
Cir. 2003). >See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir=
. 2005)(claimed alloy held obvious over prior art alloy that taught ranges =
of weight percentages overlapping, and in most instances completely encompa=
ssing, claimed ranges; furthermore, narrower ranges taught by reference ove=
rlapped all but one range in claimed invention).< However, if the reference=
's disclosed range is so broad as to encompass a very large number of possi=
ble distinct compositions, this might present a situation analogous to the =
obviousness of a species when the prior art broadly discloses a genus. Id. =
See also In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re J=
ones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); MPEP § 2144.08.
A range can be disclosed in multiple prior art references instead of in a s=
ingle prior art reference depending on the specific facts of the case. Iron=
Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d=
1225, 1228 (Fed. Cir. 2004). The patent claim at issue was directed to a w=
eight plate having 3 elongated openings that served as handles for transpor=
ting the weight plate. Multiple prior art patents each disclosed weight pla=
tes having 1, 2 or 4 elongated openings. 392 F.3d at 1319, 73 USPQ2d at 122=
6. The court stated that the claimed weight plate having 3 elongated openin=
gs fell within the "range" of the prior art and was thus presumed obvious. =
392 F.3d at 1322, 73 USPQ2d at 1228. The court further stated that the "ran=
ge" disclosed in multiple prior art patents is "a distinction without a dif=
ference" from previous range cases which involved a range disclosed in a si=
ngle patent since the "prior art suggested that a larger number of elongate=
d grips in the weight plates was beneficial... thus plainly suggesting that=
one skilled in the art look to the range appearing in the prior art." Id.
II. OPTIMIZATION OF RANGES
A. Optimization Within Prior Art Conditions or Through Routine Experimen=
tation
Generally, differences in concentration or temperature will not support the=
patentability of subject matter encompassed by the prior art unless there =
is evidence indicating such concentration or temperature is critical. "[W]h=
ere the general conditions of a claim are disclosed in the prior art, it is=
not inventive to discover the optimum or workable ranges by routine experi=
mentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (=
Claimed process which was performed at a temperature between 40°C and 80=
°C and an acid concentration between 25% and 70% was held to be prima fac=
ie obvious over a reference process which differed from the claims only in =
that the reference process was performed at a temperature of 100°C and an=
acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2=
d at 1382 ("The normal desire of scientists or artisans to improve upon wha=
t is already generally known provides the motivation to determine where in =
a disclosed set of percentage ranges is the optimum combination of percenta=
ges."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed e=
lastomeric polyurethanes which fell within the broad scope of the reference=
s were held to be unpatentable thereover because, among other reasons, ther=
e was no evidence of the criticality of the claimed ranges of molecular wei=
ght or molar proportions.). For more recent cases applying this principle, =
see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d=
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.=
2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465,=
43 USPQ2d 1362 (Fed. Cir. 1997).
B. Only Result-Effective Variables Can Be Optimized
A particular parameter must first be recognized as a result-effective varia=
ble, i.e., a variable which achieves a recognized result, before the determ=
ination of the optimum or workable ranges of said variable might be charact=
erized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 =
(CCPA 1977) (The claimed wastewater treatment device had a tank volume to c=
ontractor area of 0.12 gal./sq. ft. The prior art did not recognize that tr=
eatment capacity is a function of the tank volume to contractor ratio, and =
therefore the parameter optimized was not recognized in the art to be a res=
ult- effective variable.). See also In re Boesch, 617 F.2d 272, 205 USPQ 21=
5 (CCPA 1980) (prior art suggested proportional balancing to achieve desire=
d results in the formation of an alloy).
III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS
Applicants can rebut a prima facie case of obviousness based on overlapping=
ranges by showing the criticality of the claimed range. "The law is replet=
e with cases in which the difference between the claimed invention and the =
prior art is some range or other variable within the claims. . . . In such =
a situation, the applicant must show that the particular range is critical,=
generally by showing that the claimed range achieves unexpected results re=
lative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 19=
34 (Fed. Cir. 1990). See MPEP § 716.02 <http://www.uspto.gov/web/offices/=
pac/mpep/documents/0700_716_02.htm#sect716.02> - § 716.02(g) <http://www=
.uspto.gov/web/offices/pac/mpep/documents/0700_716_02_g.htm#sect716.02g> f=
or a discussion of criticality and unexpected results.
A prima facie case of obviousness may also be rebutted by showing that the =
art, in any material respect, teaches away from the claimed invention. In r=
e Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997) (Appl=
icant argued that the prior art taught away from use of a protective layer =
for a reflective article having a thickness within the claimed range of "50=
to 100 Angstroms." Specifically, a patent to Zehender, which was relied up=
on to reject applicant's claim, included a statement that the thickness of =
the protective layer "should be not less than about [100 Angstroms]." The c=
ourt held that the patent did not teach away from the claimed invention. "Z=
ehender suggests that there are benefits to be derived from keeping the pro=
tective layer as thin as possible, consistent with achieving adequate prote=
ction. A thinner coating reduces light absorption and minimizes manufacturi=
ng time and expense. Thus, while Zehender expresses a preference for a thic=
ker protective layer of 200-300 Angstroms, at the same time it provides the=
motivation for one of ordinary skill in the art to focus on thickness leve=
ls at the bottom of Zehender's 'suitable' range- about 100 Angstroms- and t=
o explore thickness levels below that range. The statement in Zehender that=
'[i]n general, the thickness of the protective layer should be not less th=
an about [100 Angstroms]' falls far short of the kind of teaching that woul=
d discourage one of skill in the art from fabricating a protective layer of=
100 Angstroms or less. [W]e are therefore 'not convinced that there was a =
sufficient teaching away in the art to overcome [the] strong case of obviou=
sness' made out by Zehender."). See MPEP § 2145 <http://www.uspto.gov/web=
/offices/pac/mpep/documents/2100_2145.htm#sect2145> , paragraph X.D., for a=
discussion of "teaching away" references.
Applicant can rebut a presumption of obviousness based on a claimed inventi=
on that falls within a prior art range by showing "(1) [t]hat the prior art=
taught away from the claimed invention...or (2) that there are new and une=
xpected results relative to the prior art." Iron Grip Barbell Co., Inc. v. =
USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004=
). The court found that patentee offered neither evidence of teaching away =
of the prior art nor new and unexpected results of the claimed invention dr=
awn to a weight plate having 3 elongated handle openings. 392 F.3d at 1323,=
73 USPQ2d at 1229. The court then turned to considering substantial eviden=
ce of pertinent secondary factors such as commercial success, satisfaction =
of a long-felt need, and copying by others may also support patentability. =
Id. Nevertheless, the court found that Iron Grip failed to show evidence of=
commercial success, copying by others, or satisfaction of a long felt need=
for the following reasons: (A) Iron Grip's licensing of its patent to thre=
e competitors was insufficient to show nexus between the "merits of the inv=
ention and the licenses," and thus did not establish secondary consideratio=
n of commercial success; (B) in response to Iron Grip's argument that the c=
ompetitor's production of a three-hole plate is evidence of copying, the co=
urt stated that "[n]ot every competing product that falls within the scope =
of a patent is evidence of copying" since "[o]therwise every infringement s=
uit would automatically confirm the nonobviousness of the patent;" and (C) =
although Iron Grip offered as evidence that the absence of the three-grip p=
late on the market prior to its patent showed that the invention was nonobv=
iousness, the court stated that "[a]bsent a showing of a long-felt need or =
the failure of others, the mere passage of time without the claimed inventi=
on is not evidence of nonobviousness." 392 F.3d at 1324-25, 73 USPQ2d at 12=
29-30.
Yateen Pargaonkar
Sr. Information Scientist
Pet Care Infolytics Analyst,
Patent Agent, P&G
513-622-2861
mailto:pargaonkar.y_at_pg.com
<http://inetsp.pg.com/sites/PetLINK/default.aspx>
________________________________
From: Roger Bilham [mailto:rbc.bilham_at_ntlworld.com]
Sent: Monday, September 15, 2008 7:48 AM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] Compositional Range
Dear List Members,
I am a scientist but not a patent specialist and would like to know the mea=
ning of compositional range in a patent claim. An example would be a metal =
alloy containing 0.5-3.0% of bismuth.
There is an international standard providing protocols on the rounding of n=
umbers, which, as a scientist, I would expect to be valid. However, I have =
found out that, in the field of products sold to the public, minimum 0.5lit=
res means at least 0.5 followed by an infinite number of noughts. Can you p=
lease tell me which convention applied to patents?
Returning to the example above, would an alloy containing 0.455% bismuth fa=
ll within the range 0.5-3.0% bismuth?
Best regards,
Roger Bilham
________________________________
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Received on Mon Sep 15 2008 - 17:59:29
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