In re: Gregory A. Brandt, John B. Letts, Firestone Building Prods. Co., LLC

Docket Nos. 2016-2601

March 27, 2018

Brief summary: Board decision affirming examiner’s obviousness rejection affirmed (e.g., because the ranges “abut one another,…there is no meaningful distinction” that was not overcome “with persuasive argument and/or evidence”).

Summary: Brandt (and assignee Firestone) appealed appealed PTAB decision affirming an examiner’s rejection of claims in their ‘858 application directed to “[a] covered roof comprising: (a) a roof deck; (b) an insulation board…; and (c) a coverboard…having a density greater than 2.5 pounds per cubic foot and less than 6 pounds per cubic foot” for obviousness in view of three US patents (“Griffin”, “Letts”, and “Lynn”). The density limitation is at issue in this appeal. The examiner found that Griffin discloses “a coverboard range between 6 and 25 pounds per cubic foot” that “abuts but ‘does not specifically disclose the density of the coverboard being less than 6 pounds per cubic foot.’” The examiner also “found that Lynn teaches a rigid foam made from polymeric material with a bulk density ranging between 1 and 5 pounds per cubic foot that does overlap” the claimed range. “Based on the combined teachings of Griffin and Lynn, the examiner concluded that it would have been ‘an obvious design choice’” to select the ‘858 claimed range, and the Board affirmed that rejection (e.g., “the difference in the ranges was ‘virtually negligible’ and ‘could not be smaller’”, citing Haynes, FC 1993 (“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 different in the range or value is minor” (Haynes citing Titanium Metals, FC 1985). The Board also found that Brandt failed to rebut the prima facie rejection or that “Griffin’s disclosed low-end range…would have any different properties” than “5.99 pounds per cubic foot.” The FC panel reviewed the Board’s legal conclusions (obviousness) de novo and its underlying factual findings for substantial evidence (ACCO, FC 2016; In re Gartside, FC 2000 (“as a reasonable mind might accept as adequate”)). Brandt argued that the Board erred by applying the per se rule that a prima facie case of obviousness exists “whenever the differences between a prior art reference’s disclosed range” and that of the claims “are close”, relying on In re Patel (FC 2014 (only prima facie obvious “if there is an overlap”)). The FC panel found, however, that the “Board did not apply a per se rule” and instead, e.g., “specifically agreed with the examiner’s factual finding that the difference…was ‘virtually negligible’”. It also noted that “[t]his is a simple case in the predictable arts that does not require expertise to find that the claimed range” and that of the prior art “are so mathematically close that the examiner properly rejected the claim”. The FC panel explained that “[t]he nonbinding holding in Patel…does not stand for the proposition…that a claimed range and prior art range must overlap…to find a prima facie case” and that Brandt because the ranges “abut one another,…there is no meaningful distinction” that was not overcome “with persuasive argument and/or evidence”. And the FC panel was not convinced by Brandt’s teaching away arguments as they “failed to show that Griffin ‘criticize[s], discredit[s], or otherwise discourage[s] the solution claimed” (In re Fulton, FC 2004). The Board decision was therefore affirmed.

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