Digest of In re Rajen M. PatelNo. 2013-1301 (Fed. Cir. July 16, 2014) (nonprecedential). On appeal from USPTO and PTAB. Before O’Malley and Hughes.

Procedural Posture: Patent applicant appealed a Patent Trial and Appeal Board decision affirming the patent examiner’s rejection of certain claims as obvious. CAFC vacated the rejection of some claims but affirmed other claims as obvious.

  • Obviousness: During prosecution, the PTO bears the initial burden of establishing prima facie case of obviousness. A rejection based on ranges approaching each other may be appropriate where there is teaching in the prior art that the end points are approximate or flexible. A claimed range disclosed by prior art can overcome obviousness if it exhibits unexpected results over the entire claimed range, but not if just a single point within the claimed range yields unexpected results. Here, the prior art disclosed a range (e.g., 10–15%) outside that of the claimed range (e.g., 16–20%) and the court found the evidence did not establish a prima facie case for those claims. For the remaining claims appealed, however, the claimed range was within the prior art range, creating a prima facie case of obviousness. CAFC affirmed that applicant had not shown unexpected results for its claimed range.

Ian Moore