Federal Circuit No. 2013-1301

How close is "close enough" and what defines the "unexpected?"  These are the two questions the Federal Circuit aimed to answer in a decision on appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board (PTAB). 

The technology involved was a nonwoven fabric made from a combination of two different components.  The Examiner's rejection of claims 1-8, 30-38, 40-46, 49 and 50 of application No. 11/578,646 ("the '646 application") were on appeal. 

The only claim limitations at issue in the appeal were the amount of the first polymer present in the claimed polymer blend, and its density -- the first polymer is present in an amount of from 26 wt% to 80 wt% by weight of the polymer blend, and the density of the first polymer is in the range of 0.87 to 0.95 g/cm3.  The '646 application included dependent claims specifically reciting a claimed range for the amount of the first polymer. 

During prosecution of the '646 application, the pending claims were rejected under 35 U.S.C. § 103(a) as being obvious over U.S. Patent No. 6,015,617 ("Maugans") in view of U.S. Pre-Grant Publication No. 2003/0003830 ("Ouederni").  Particularly, the Examiner relied on the disclosures in Maugans of a first polymer being present in an amount of 0.5 to 25 wt%, and having a density range of 0.85 to 0.95 g/cm3.  In response, applicants argued that the claimed range of 26 to 80 wt% of the first polymer does not overlap with the 0.5 to 25 wt% range disclosed in Maugans, and experimental data shows improved abrasion results when using a higher density of 0.915 g/cm3.  With regard to the density, applicants relied on Examples 11 and 17 of the '646 application.  The densities of the nonwoven fabric of Examples 11 and 17 were 0.913 g/cm3 and 0.915 g/cm3, respectively, and Example 17 contained 5% more of the first polymer.  Applicants argued that all things being equal, inclusion of more of the first polymer in the nonwoven material should improve abrasion performance.  However, contrary to the expected increase in the abrasion performance of the nonwoven material of Example 17, it was, in fact, the nonwoven material of Example 11 that showed 15% improvement in abrasion performance.  Thus, per the applicants, the improvement in abrasion performance observed for Example 11 was "unexpected."

The PTAB affirmed the Examiner's rejection on both counts, finding that 25 wt% and 26 wt% are close enough in value for a person of ordinary skill in the art to reasonably expect a blend comprising either 25 wt% or 26 wt% of the homogenously branched component to have the same or similar properties, and that applicants failed to show that the evidence of unexpectedly superior results relied on is commensurate with the scope of the claim. 

On appeal, the Federal Circuit decided the case primarily on two issues -- (1) whether the claimed range of 26 to 80 wt% is prima facie obvious based on Maugans disclosure of a range of 0.5 to 25 wt%, and (2) whether a single example is sufficient to establish criticality of a given range. 

On the first issue, the Federal Circuit found that a claimed range is not prima facie obvious unless the prior art discloses a range that either fully or at least partially overlaps with the claimed range.  In reaching their decision, the Federal Circuit distinguishes the facts of the present case over three cases relied on by the PTAB in affirming the claim rejections -- (1) In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990), (2) Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985), and (3) In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). 

In In re Woodruff, the Federal Circuit had affirmed a finding of obviousness for a process for inhibiting the growth of fungi.  In re Woodruff, 919 F.2d at 1575.  The claimed process required maintaining the percentage of carbon monoxide in a range of ">5-25%."  The prior art disclosed maintaining carbon monoxide in a range of "about 1-5%."  The Federal Circuit found that the inclusion of the term "about" allows for concentrations slight above 5%, which overlapped with the claimed range.  Id. at 1577.  The Federal Circuit explained that In re Woodruff does not apply to the present case where there is no overlap between the upper limit of the prior art range and the lower limit of the claimed range. 

In Titanium Metals, the claimed alloy included 0.3% molybdenum (Mo) and 0.8% nickel (Ni).  The prior art disclosed two alloy examples -- (1) 0.25% Mo and 0.75% Ni, and (2) 0.31% Mo and 0.94% Ni.  Titanium Metals, 778 F.2dat 782-83.  The Federal Circuit found that the alloy compositions of the prior art were close enough to render obvious the claimed compositions.  Id. at 783.  The Federal Circuit distinguished Titanium Metals from the case at issue on the basis of the two prior art alloy compositions being close together, thereby being similar to a range.  Further, the claimed composition simply adopted a measure between the upper and lower limit of the alleged range, i.e., the claimed composition fell between the two prior art alloy compositions. 

In In re Peterson, the Federal Circuit upheld a finding of obviousness of a claimed range based on prior art ranges that either fully or at least partially overlapped with the claimed ranges.  In re Peterson, 315 F.3d at 1327.  The Federal Circuit distinguished the In re Peterson finding over the present case by clarifying that any mention of a possible prima facie obviousness of a claimed range based on prior art ranges that do not overlap but "are close enough" in In re Peterson was dicta. 

On the second issue regarding the density of the first polymer, the Federal Circuit found that a 15% improvement in abrasion performance (as shown by the examples of the specification) does not reach the level of unexpected results.  SeeIn re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (finding a 26 percent improvement in wear resistance insufficient to constitute proof of "substantially improved result"); In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (finding "substantially improved results" to overcome obviousness when the 50-fold improvement in tensile strength was much greater than would be predicted).  The Federal Circuit also clarified that a single data point was insufficient to establish criticality of an entire range.  Further, the court stated that a determination of unexpected results is a question of fact; thus, the Federal Circuit deferred to the PTAB findings. 

The Federal Circuit affirmed-in-part the PTAB affirmance of prima facie obviousness based on the density of the first polymer, but vacated-in-part the PTAB affirmance of prima facie obviousness based on the claimed amount of the first polymer, and remanded for further proceedings.