In some technology areas, such as the chemical arts, inventions often revolve around finding a certain range of ingredients or operating conditions that enable certain improved results. Because these arts are very unpredictable, and there are so many different ingredients to try and utilize, inventions lie in finding the particular combination of elements and ranges that enable systems to operate. Consider battery chemistry - the unpredictable art that held back electric vehicles (at least in part) for a hundred years (according to some).

Today we discuss how, at the USPTO, the applicant has a tough row to hoe, even in these unpredictable arts, when the difference between the cited references and the claimed invention is “merely” the difference in a claimed range (including when the ranges are non-overlapping).

As noted in a previous post, there are some tricks to dealing with the issue of optimization of ranges (where the applicant claims a value within a range disclosed in the prior art). There, it is in applicant’s interest to establish, with evidence, some sort of criticality of the claimed values.

In a similar vein, even when the applicant claims values that are not within a disclosed range in the prior art, the applicant should be cautious and be prepared to come forward with evidence of unexpected advantages or reasons as to why the particular claimed value or range is so important. For example, as the Federal Circuit recently pointed out in in re Brandt, claiming a range that abuts the prior art can be prima facia obvious:

… because the claimed range and the prior art range abut one another, and Appellants conceded as fact that there is no meaningful distinction between the two ranges, substantial evidence supports the Board’s finding that the difference in cover board density ranges “could not be smaller.” J.A. 5. And because Appellants did not overcome the Board’s rejection based on the prima facie case with persuasive argument and/or evidence, we there-fore conclude that in this case the Board did not err by affirming the examiner’s obviousness rejection. See Titanium Metals, 778 F.2d at 783 (stating a prima facie case of obviousness can be found where the ranges “are so close that prima facie one skilled in the art would have expected them to have the same properties”); In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).

A recent PTAB case extends even further than Brandt to cover situations where the end values of the prior art are taught to be flexible. Specifically, in SN 14/350,890, the applicant claimed values outside of the prior art’s disclosed range and argued to the Board that, therefore, the Examiner had failed to establish a prima facia case. The Board, however, was not convinced (emphasis added):

A claimed invention can be rendered prima facie obvious by a prior art reference that discloses a range that touches the range recited in the claim. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). The ranges disclosed by Clement are not presented as exact cut off points and Clement does not state any particular reason for selecting 5 micrometers as the maximum for the microfiber range. There is no specific teaching away from slightly higher diameters for the microfibers. Thus, Clement provides evidence that the outer boundaries of the ranges are not critical. The evidence is sufficient to support a prima facie case of obviousness and the burden shifts to Appellant to show that the prior art either taught away from the 5-8 micrometer range of claim 1 or to show that Appellant obtains unexpected results using diameters in the range of the claim. See In re Malagari, 499 F.2d at 1303; see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (discussing cases in which a difference between the claimed invention and the prior art was a concentration range or difference in another variable and stating that "in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.").

Thus, the PTAB somewhat turns the requirement that the Office establish obviousness on its head to essentially require that the Examiner merely needs to show that the prior art does not teach away from the claimed range. Further, this “turn” is based on drafting language that was likely merely added by a careful drafting attorney to avoid the specification being used to overly restrict the claims of the prior art application.

So, when working in the unpredictable arts with an invention that is based on claimed values or ranges, be prepared to come forward with evidence even if your claimed range is outside all of the cited references, especially if the cited references were carefully drafted with permissive language.