Docket No. 2011-1461, -1462, -1463, -1464
NEWMAN (D), CLEVENGER, LINN
August 29, 2012
Brief summary: Claims may be obvious where prior art discloses variables and recognizes the same are relevant to the desired properties of the claimed subject matter (“result-effective variables”).
Summary: Applied Materials (“Applied”) appealed four BPAI decisions affirming the Examiner’s rejection of its claims relating to polishing pads of a particular width, depth, pitch, and orientation for chemical mechanical polishing (“CMP”) obvious. One reference disclosing a width of 0.01 inches was found to meet the limitation requiring widths between “about 0.015 inches and 0.04 inches.” Two others were found to disclose that the grooves could have a larger or smaller pitch and to overlap the claimed depths. The BPAI concluded the claims were “obvious because the prior art discloses values overlapping the claimed ranges”, “the dimensions were result-effective variables”, the identification of an optimal range was within the ordinary skill in the art (In re Boesch, CCPA 1980; In re Aller, CCPA 1955), and Applied did not provide any evidence of unexpected results. The FC panel first acknowledged that “[t]he Board’s opinions in the present appeals are not a model of clarity, but the Board’s ‘path may reasonably be discerned'” (Bowman, US 1974) and is consistent with precedent (In re Peterson, FC 2003 ((“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of . . . ranges is the optimum combination . . . .”); In re Geisler, FC 1997; In re Malagari, CCPA 1974). No error was found with the BPAI’s reliance on Applied’s “admission…that the prior art taught that the dimensions could be modified and that modification would affect pad performance, which was sufficient to find the dimensions to be result-effective variables” (see In re Antoine, CCPA 1977 (variable not result-effective because the prior art did not disclose the claimed ratio, or even recognize that one of the variables in the ratio was relevant to the desired property); In re Yates, CCPA 1981). It was explained that “a claim to a product does not become nonobvious simply because the patent specification provides a more comprehensive explication of the known relationships between the variables and the affected properties” but “a new and unexpected result which is different in kind and not merely in degree from the results of the prior art” may be patentable (In re Aller, In re Peterson, KSR (US 2007)). The panel also agreed with the BPAI decision regarding teaching away (none here, citing In re Gurley, FC 1994 (teaching away if one is “discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken”)) and unconvincing commercial success as there was no “nexus between the features of the claimed invention and its success because the best known methods are a factor unrelated to the quality of the claimed invention” (In re Huang, FC 1996)). Judge Newman’s dissent argued that the PTO only provided “prior art having variations in width, depth, and pitch” without any “suggestion of changing the parameters in the manner done by this patentee” (citing In re Dow Chemical, FC 1988 (“the expectation of success must be founded in the prior art, not in the applicant’s disclosure”).