Docket No. 2013-1301
July 16, 2014
Brief Summary: Proximity of claimed ranges to prior art without any actual overlap not enough to establish obviousness. Unexpected results must be shown over the entire claimed range.
Summary: The applicants of U.S. 11/578,646 appealed PTAB affirmance of patent examiner’s rejection of their claims relating to “nonwoven materials comprises of monocomponent fibers, bicomponent fibers, or mixtures thereof” as obvious. The claims require “from 26 weight percent to 80 weight percent (by weight of the polymer blend) of a first polymer” and “a density of from 0.915 to 0.950 grams/centimeter3”. The examiner found that the first polymer blend overlapped the prior art and that unexpected results were not shown for the density range. Regarding the weight percentage, the reference only disclosed a range of 0.5 to 25 weight percent but the PTAB stated 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 homogenously branched component to have the same or similar properties”, citing In re Woodruff (FC 1990), Titanium Metals (FC 1985) and In re Peterson (FC 2003). The FC distinguished these cases from this situation, explaining that In re Woodruff disclosed “about 1-5%” and that “about” is not at issue here. Titanium Metals was explained to differ in that it related to the disclosure of “single points, not ranges, and the claimed amount fell within the two single amounts disclosed by the prior art” (although the Titanium Metals opinion 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”). And In re Peterson was explained to refer to the “so close” statement, all the ranges in the prior art and the claims at issue “overlapped at least to some degree”. Acknowledging that “[d]epending on the technology, even small differences in formulations can be meaningful”, the opinion also noted “[w]here 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.” The FC therefore concluded “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.” However, no error was found with the PTAB conclusion of no unexpected results regarding the density limitation “over the entire claimed range” (In re Peterson, FC 2003 and In re Geisler, FC 1997).