Newsletters and Bulletins / Court of Appeal Decisions 2003 / In re Peterson |
||
|
In re Peterson involved an appeal from the USPTO Board of Appeals with respect to the patentability of the claims of a pending US patent application. The primary issue in this case was on the determination of obviousness. The claim in suit related to a nickel base superalloy consisting essentially of 1 - 3% Rh about 14% Cr and specified amounts of other elements. The examiner asserted a case of prima facie obviousness based on over lapping ranges in prior art references. The applicant argued that no one would have chosen his particular rhenium content and argued that this produced unexpected properties. The court dealt first with the question of prima facie obviousness in this type of situation, stating: “Selecting a narrow range from within a somewhat
broader range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In fact, when, as
here, the claimed ranges are completely encompassed by the prior art, the
conclusion is even more compelling than in cases of mere overlap. 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
percentage ranges is the optimum combination of percentages. See In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (“[D]iscovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art.” (citations
omitted)). We therefore conclude that a
prior art reference that discloses a range encompassing a somewhat narrower
claimed range is sufficient to establish a prima facie case of obviousness. That
is not to say that the claimed composition having a narrower range is
unpatentable. Rather, the existence of overlapping or encompassing ranges shifts
the burden to the applicant to show that his invention would not have been
obvious...”
In cases where a narrow numerical range is selected from a
broader prior art range, at least when dealing with multi-component compositions
of matter, even a slight overlap will result in a
prima facie case. Indeed this may occur
even without overlap because there is a normal tendency of those skilled in the
art to improve on what is generically known establishes a
prima facie case of obviousness. This
can be overcome by showing the narrower range claimed later to be critical, for
example by showing unexpected results throughout the narrow range when compared
with the generality of the broader range. An alternative way to overcome the
prima facie case would be to show that
the prior art teaches away from the invention in some material respect. In the
present case, however, the examples were held not to support any criticality and
the prior art, despite some teaching that too high a chromium level could be
catastrophic, did not point away.
[1]
65 USPQ2d 1379 (Fed. Cir. 2003).
|
||
[Home] [About Ladas & Parry LLP]
[Contact Us] [Search]
[Trademarks] [Domain Names
& E-Commerce] [Patents & Copyrights]
[Litigation] [IP Rights
Maintenance] [IP as Property] [News
& Bulletins]
© Copyright 2003 Ladas & Parry - Posted June 21, 2003
Please read our disclaimer.