Non-Overlapping Ranges Can Be Sufficient for A Prima Facie Finding of Obviousness

April 2018

 

In Re Brandt, No. 2016-2601 (Fed. Cir. Mar. 27, 2018)

In Brandt, the Federal Circuit affirmed a finding by the Patent Trial Appeal Board, supporting a patent examiner’s rejection of patent application claims as obvious over the prior art. The examiner rejected claims reciting a numerical range over prior art teaching a numerical range that was close to, but non-overlapping with, the claimed range.
The Brandt patent application claimed a multi-layer roofing material in which one of the layers was a coverboard having a specified density. Specifically, the claim recited a range having an upper bound of less than 6 lbs/ft³, and the prior art recited a range between 6 and 25 lbs/ft³. The Office rejected the claims on the grounds that a slightly lower value than the art-taught value could be obtained by an obvious design choice or by the slightest margin of error. The Patent Trial and Appeal Board affirmed the Office’s finding of obviousness, and the applicants appealed to the Federal Circuit.

The Federal Circuit affirmed. Prima facie obviousness may be found where the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. This is particularly appropriate where the prior art teaches that the end points of the ranges are approximate, or may be flexibly applied. Here, the claimed range and the prior art range abutted one another, and there was no reasonable argument that a prior art coverboard having a 5.99 lbs/ft³ density would have any different properties than one with a density of 6.00 lbs/ft³. The court also commented that this was a simple case and the art was predictable.

Key takeaway: A claim reciting a numerical range can be obvious over art teaching a non-overlapping numerical range, when the ranges are close and one skilled in the art would expect the two ranges to have the same properties.