The Supreme Court has made a sport of reversing the Federal Circuit over the past decade or so, and other than reserved (and sometimes not so reserved) statements by members of the lower court, the Federal Circuit has (properly) deferred to the Supreme Court's decisions without much protest (albeit occasionally being able to demonstrate the difficulties in implementing the Court's holdings; see Alice Corp. v. CLS Bank Int'l). In a recent case regarding a U.S. Patent and Trademark Office obviousness determination, the Federal Circuit may have made such a statement in support of its jurisprudence, more by omission than expressly.
The claims at issue involved a composite material as claimed in representative claim 1:
1. A nonwoven material comprised of fibers having a surface comprising a polyethylene blend, said fibers being selected from the group consisting of monocomponent fibers, bicomponent fibers or mixtures thereof, said nonwoven material having a fuzz/abrasion less than or equal to 0.0214(BW) + 0.2714 mg/cm2 when the material comprises monocomponent fibers and said nonwoven material having a fuzz/abrasion less than or equal to 0.0071(BW) + 0.4071 mg/cm2 when the material consists of bicomponent fibers, wherein the fibers are from 0.1 to 50 denier and wherein the polymer blend comprises:
a. from 26 weight percent to 80 weight percent (by weight of the polymer blend) of a first polymer which is a homogeneous ethylene/a-olefin interpolymerhaving:
i. a melt index of from about 1 to about 1000 grams/10 minutes, and
ii. a density of from 0.915 to 0.950 grams/centimeter3, and
b. from 74 to 20 percent by weight of a second polymer which is an ethylene homopolymer or an ethylene/a-olefin interpolymer having:
i. a melt index of from about 1 to about 1000 grams/10 minutes, and
ii. a density which is at least 0.01 grams/centimeter3 greater than the density of the first polymer
wherein the overall melt index of the polymer blend is greater than 18 grams/10 min.
The PTAB affirmed the Examiner's determination that certain claims were obvious over the cited prior art (the Maugans reference, in view of U.S. Patent Application Publication No. 2003/0003830).
The limitations at issue in this appeal were the recited ranges of weight percentage and density of the first polymer component of the material. The Examiner found and the PTAB agreed that the recited weight percentage ranges in the prior art (0.5-25 weight percent), although not overlapping with the ranges recited in the claims (26-80 weight percent), did not have a "patentably distinguishable difference" between them, and that the claimed material would have been obvious to one having ordinary skill in the art. On the other hand, the density ranges in the prior art (0.855 – 0.950 g/cm3) did overlap with the ranges recited in some of the claims. Further, the PTAB affirmed the Examiner's findings that the applicants had not demonstrated unexpected results that overcame the asserted prima facie obviousness determination.
The Federal Circuit disagreed with the Board's decision, in an opinion by Judge O'Malley joined by Judge Hughes (Judge Rader, originally on the panel did not contribute or join the decision); in its decision, the Federal Circuit vacated the obviousness rejection for all but two of the claims at issue. After setting out the standards for examination (wherein the Office has the initial burden of asserting a prima facie case of obviousness and the applicant has the opportunity to rebut this determination if and only if the Office has established the prima facie case), the opinion addressed both grounds (weight percent and density) upon which the Office had asserted its putative prima facie case.
Regarding the weight percentage limitation, the panel noted that certain of the claims did and others did not recite weight percentage ranges that overlapped the prior art. For the claims where the ranges do not overlap, the panel held that the art did not support the asserted obviousness rejection. Simply put, close is not enough, without some teaching in the art that there was some basis for the skilled worker to believe a material having a weight percentage of 26% would have "the same or similar properties" as one having the 25% taught in the prior art. The Federal Circuit distinguished the three cases cited by the Board in support of its position: "(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)." Regarding the Woodruff case, the panel perceived that in that case ranges of "about 1-5%" permitted "concentrations slightly above 5%" to be encompassed by the claims, which thus overlapped with prior art that recited a range of ">5-25%." In the Titanium Metals case, "single points," not ranges, were recited and disclosed by the prior art. Under these circumstances, "the prior art establishe[d] two measures -- which were themselves not far apart -- and the claim simply adopted a measure between those end points." The opinion analogized this situation to the case of prior art that recited a range and the claims at issue reciting a value falling with the prior art range. This situation does not exist with regard to the weight percentages recited in this case (either for the prior art or claimed ranges) and thus the panel held that this case citation did not support the Board's position. Finally, in the Petersen case, the claimed ranges "either fully or at least partially overlapped" the prior art ranges. However, while the opinion acknowledges that "[i]t is well-established that a prima facie case of obviousness exists when the claimed and prior art ranges overlap," the further statement that "obviousness exists when 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" was dicta, and thus the Petersen case did not support the Board's obviousness determination.
The opinion does recognize that there will be instances where the art teaches that such ranges are approximate or that values or ranges close to but not encompassed within an expressly recited prior art range can still support a finding of obviousness, but "the PTAB cites to no such evidence" in this case. Accordingly:
Depending on the technology, even small differences in formulations can be meaningful. Where differences clearly exist and there is no evidence that they are either not meaningful or one of skill in the art would know to discard the limits set by the prior art, proximity alone is not enough to establish a prima facie case of obviousness.
Turning to the density limitation, the applicants did not dispute that the Office had established a prima facie case of obviousness because here the recited range (0.951 – 0.950 g/cm3) did overlap with the prior art range (0.855 – 0.950 g/cm3). Thus, the question before the panel was whether the applicants had rebutted the prima facie case by a showing of unexpected results. Here, the Federal Circuit held that the applicants had not done so. According to the opinion, the difference in the panel's decision rested in part on the different standards of review; whereas the question of whether the Office had established a prima facie case with regard to the weight percentage issue was one of law, the question of whether applicants had made a sufficient showing of unexpected results with regard to the density issue was one of fact, for which the Federal Circuit was compelled to review the PTAB's decision for substantial evidence. In this case, applicants had shown but a 15% improvement in performance using embodiments falling within the scope of the range disclosed and claimed in their application, and the Board held and the Federal Circuit affirmed that "Appellants' reliance on the 15 percent improvement in the abrasion performance does not reach the level of unexpected results to overcome the finding of obviousness." Moreover, the Board held and the Federal Circuit agreed that applicants failed to show unexpected results "over the entire claimed range" (emphasis in opinion). "Appellants cannot rely on a single point within a large range to prove unexpected results for the entire range," according to the opinion, and "for an applicant to overcome a prima facie case of obviousness through unexpected results in a range that overlaps with a range disclosed in the prior art, the applicant must "show that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range," citing In re Woodruff. Because applicants here had not done so, the panel agreed that there was substantial evidence that they did not provide sufficient evidence of unexpected results to rebut the Office's prima facie obviousness determination.
While this outcome is not remarkable, even a cursory review of the cases cited in this opinion reveals that not one were decided after the Supreme Court's decision in KSR v. Teleflex, a case recognized as having changed the standards for deciding when a claim in obvious. All of the cited cases, including Peterson, Woodruff, Titanium Metals, In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005); In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992); In re Glaug, 283 F.3d 1335 (Fed. Cir. 2002); In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997); In re Clemens, 622 F.2d 1029 (CCPA 1980) and In re Soni, 54 F.3d 746 (Fed. Cir. 1995), are prior to the KSR decision, many of them from the "golden age" of the Court's history when Judges like Markey and Rich were writing the opinions. Perhaps the most direct indication that the panel was content to remind litigants that its patent jurisprudence is (in large part) alive, well and not reversed by the Supreme Court is the citation of In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999), a case involving a trash bag imprinted with a large pumpkin logo for discarding leaves in autumn. This case was almost a poster child for those members of the bar and academy who believed that the Federal Circuit's standards for non-obviousness had become too lax, and yet the panel here cites this case for the black letter proposition that "[w]hether an invention is obvious under 35 U.S.C. § 103 is a legal conclusion based on underlying findings of fact." Whether the implications recognized here were intentional or accidental may be making too much of this reading of the judicial tea leaves, but it would be refreshing for a court as battered by its superior court over areas where the lower court has an acknowledged special expertise to occasionally provide a reminder of that expertise and the mandate for harmonizing U.S. patent law that it supports.
In re Patel (Fed Cir 2014)
Panel: Circuit Judges O'Malley and Hughes (Circuit Judge Raderdid not participate in this decision)
Opinion by Circuit Judge O'Malley