Applicants should be prepared to disclose as much as possible regarding a claimed range aside from merely stating its endpoints.
On February 11 and 12, 2020, the United States Patent and Trademark Office held a series of webinars covering the interpretation of ranges during the prosecution of patent applications. The following is a brief report and summary of the covered material.
Numerical ranges provide more than just two particular endpoints for a set of data within patent applications. The interpretation of a claimed numerical range when compared with disclosed numerical ranges in the prior art, assuming the claimed invention recites the other limitations of the prior art, can form the basis for an anticipation rejection based on 35 U.S.C. § 102, an obviousness rejection under 35 U.S.C. § 103, or an alternative grounds rejection under both 35 U.S.C. §§ 102/103.
The simplest case is where a specific embodiment or a preferred range in the prior art is within a claimed range. Here, the prior art anticipates the claimed range and a rejection under 35 U.S.C. § 102 is appropriate. Multiple claimed ranges must be analyzed separately and the claim is anticipated if there is an example in the prior art that is within all of the claimed ranges.
A prima facie case of obviousness exists under 35 U.S.C. § 103, where the claimed ranges overlap, including the touching of endpoints, or lie inside ranges disclosed by the prior art because it would have been obvious to select overlapping portions of the range. Like that of anticipation, where there are multiple claimed ranges, analysis must be performed for each range; if at least one claim is rendered obvious by the teachings of a reference, the whole claim is obvious over the reference. Applicants can demonstrate the criticality of the claimed range or show that the art teaches away to rebut a prima facie case of obviousness based on overlapping ranges.
The examiner can make a rejection under 35 U.S.C. §§ 102/103 if it is shown that the prior art, which teaches a range overlapping the claimed range, discloses the claimed range with sufficient specificity. A sufficient specificity analysis is heavily fact-dependent and factors to consider are: the size of the ranges, the extent of overlap, the nature of the variables (i.e., predictability of the variables) and the criticality of the claimed range relative to the prior art. Anticipation can be found if the analysis shows that the disclosed point or range is sufficiently specific to the claimed range. Compare Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) (en banc) (finding that the prior art’s teaching of a broad genus of a temperature range does not necessarily disclose every species within the genus and ruling against a finding of sufficient specificity and anticipation due to disclosure of criticality of narrower temperature range) with ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012) (finding sufficient specificity and thus, anticipation due to lack of disclosure of the criticality of disclosed range). It is a best practice that the examiner provide reasons for both anticipation and obviousness of the claimed range if it is unclear that the prior art teaches the range with sufficient specificity in making a 35 U.S.C. §§ 102/103 rejection.
Applicants should be prepared to disclose as much as possible regarding a claimed range aside from merely stating its endpoints. A common thread in overcoming an obviousness and a rejection based on 35 U.S.C. §§ 102/103 rejection is the emphasis of the criticality of the claimed range, which can be used to rebut obviousness and avoid anticipation due to sufficient specificity. Applicants should also be prepared to provide a more complete and full disclosure as to why a particular disclosed range is important. For example, embodiments outside of the claimed ranges exhibit deleterious properties that are contrary to the present invention. A more complete disclosure will better facilitate prosecution of the application.
In short, err on the side of disclosing various ranges within a broad range and exemplification outside the range to illustrate the criticality and hence the nonobviousness of the range and sub-ranges as to results (e.g., yield), performance or properties of a process or product to be patented.
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