On March 27, 2018, the Court of Appeals for the Federal Circuit ruled in In re Brandt, which is just another case in a long line of cases dealing with ranges and obviousness under 35 U.S.C. §103. The facts are as follows.
Gregory A. Brandt and John B. Letts, the application-at-issue’s two inventors, and Firestone Building Products Co. owned the U.S. Patent Application No. 13/652,858 (“858”),[1] directed to high density polyurethane or polyisocyanurate construction boards, and uses in flat or low-slope roofing systems.
Claim 1 recites:
A covered roof comprising:
(a) a roof deck:
(b) an insulation board including a poyurethane, a polyisocyanurate, or a mix of poyurethane and polyisocyanurate cellular structure, and said insulation board having a density that is less than 2.5 pounds per cubic foot; and
(c) a coverboard including a poyurethane, a polyisocyanurate, or a mix of poyurethane and polyisocyanurate cellular structure, said coverboard having a density greater than 2.5 pounds per cubic foot and less than 6 pounds per cubic foot and a first planar surface and a second planar surface, said first planar surface and second planar surface each having a facer positioned adjacent thereto.
(Emphasis added.)
During prosecution of the ‘858 application, the Examiner issued a Final Office Action[2] rejecting claims 1 and 3 under §103(a) over U.S. Patent Application Publication No. 2006/0096205 to Christopher Griffin (“Griffin”), in view of U.S. Patent No. 5,891,563 to John B. Letts (“Letts”), the same co-inventor of the present application,[3] and U.S. Patent No. 6,093,481 (“Lynn”). Griffin discloses a prefabricated roofing panel coverboard having a polymer material core layer with a density of between 6 lb/ft3 and 25 lbs/ft3, and preferably a density of at least 8 lb/ft3. Lynn is directed to a method for manufacturing insulation board involving rigid foam layer between laminate facing sheets. Lynn describes the foam layer is polymer-based, and includes as suitable polymers, among others, polyurethane and polyisocyanurate. The desired bulk density was disclosed as between 0.5 and 10, and preferably between 1 and 5 lbs/ft3. The Examiner determined that Griffin discloses a range that abuts the ‘858 range, but did not specifically disclose the range below 6 lb/ft3. Based on the combination of Griffin and Lynn, the Examiner concluded that it would have been obvious to a POSITA to have a coverboard with density below 6 lb/ft3. Brandt appealed to the PTAB, but the rejection was affirmed. The PTAB found that the differences in the ranges were “virtually negligible” and “could not be smaller.” Therefore, the PTAB found claims 1 and 3 prima facie obvious[4] based on the Titanium Metals rule that:
when differences between the claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference of the range or value is minor.[5]
The PTAB also noted that Brandt failed to rebut the prima facie obviousness presumption with evidence of teaching away[6] or unexpected results.[7] To be clear, the claimed range was 2.5 to 6 lb/ft3, while the prior art ranges were between 0.5 to 10 lb/ft3 and 6 to 25 lb/ft3, with preferable ranges between 1 to 5 lb/ft3, and 8 lb/ft3. In other words, the Brandt range was right in betweeen the two prior art ranges.
Upon appeal, the Fed Circuit panel affirmed. The panel, comprised of Judges Lourie, Reyna, and Taranto, observed:
This is a simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 pounds per cubic foot and the prior art range of between 6 lb/ft3 and 25 lb/ft3 are so mathematically close that the examiner properly rejected the claims as prima facie obvious.[8]
The panel noted that Brandt failed to contest the proximity of the ranges, and also conceded that the ranges were “virtually negligible.” This is similar to Titanium Metals, where the Fed Circuit held that a prima facie case of obviousness is found where “the ranges are so close that prima facie one skilled in the art would have expected them to have the same properties.”[9]
As for Brandt’s rebuttal arguments, no evidence of unexpected results were introduced, and Brandt’s argument for teaching away was just a rote argument that some criticality was necessary to having a coverboard density of greater than 6 lb/ft3. This is not the requisite evidentiary support as required by MPEP 2145.
This case just follows a long line of Fed Circuit precedent finding that overlapping or similar ranges can be prima facie obvious.[10] In Titanium Metals, the rejection was proper where the claim was directed to an alloy of 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium as obvious over prior art disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium, and 0.94% titanium.[11] In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0 – 9.0.[12] In In re Woodruff, the claimed range of 5% was obvious over a prior art range of “about 1-5%.”.[13] In In re Aller, a claimed process performed at a temperature of between 40°C and 80°C and acid concentration between 25% and 70% was prima facie obvious over a prior art process performed at a temperature of 100°C and an acid concentration of 10%.[14] While not an entirely groundbreaking ruling, Brandt does slightly expand the case repertoire by including ranges found obvious that are “virtually negligible.”
[1] U.S. Patent App. Ser. No. 13/652,858, filed Oct. 16, 2012, published as U.S. Patent Application Publication No. US 2013/0036694 A1, on Feb. 14, 2013.
[2] See MPEP 706.07.
[3] The Letts ‘563 patent was not at issue on appeal.
[5] See Brandt, supra (slip op. at 5); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)).
[6] See MPEP 2145(X)(D): “it is improper to combine references where the references teach away from their combination” (citations omitted).
[7] See MPEP 2145: “a showing of unexpected results must be based on evidence, not argument or speculation.”
[8] See Brandt, supra (slip op. at 9).
[9] See Titanium Metals, 778 F.2d at 783.
[10] See MPEP 2144.05: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
[11] See Titanium Metals, 778 F.2d at 783.
[12] 520 U.S. 17 (1997).
[13] 919 F.2d 1575 (Fed. Cir. 1990).
[14] 220 F.2d 454, 456 (C.C.P.A. 1955).