Geisler concedes that the examiner was correct to find the claims prima facie obvious, because the claimed thickness range of 50 to 100 Angstroms for the protective layer overlaps at its end point with the thickness range of 100 to 600 Angstroms disclosed by Zehender. See Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n. 3, 28 USPQ2d 1652, 1655 n. 3 (Fed. Cir. 1993) ("when the difference 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 in range or value is minor"); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Addressing a case similar in some respects to this one, the Court of Customs and Patent Appeals stated that a prima facie case of obviousness can be rebutted if the applicant (1) can establish "the existence of unexpected properties in the range claimed" or (2) can show "that the art in any material respect taught away" from the claimed invention.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. E.g., In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Such is the case here. Claim 5 of Peterson's application recites and Shah discloses superalloys having the following compositions:
(Kali's Br. 22-23.) The Court agrees with Kali. "`[W]hen the difference 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 in range or value is minor,'"Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (alteration in original) (quoting Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d. 1573, 1577 n. 3 (Fed. Cir. 1993)), or where the claimed range overlaps or touches the range recited in the prior art, id. (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997), and In re Malagari, 499 F.2d 1297, 1303 (C.C.P.A. 1974)). In such cases, "[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."
In Peterson, this court recognized that "[a] prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) ); In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir. 1990) ; In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) ). At issue in Peterson was a claim to a nickel-base single-crystal superalloy used in the manufacture of turbine engines.
(quoting In re Soni, 54 F.3d at 750)); Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 969–70 (Fed.Cir.2006) (affirming nonobviousness over prima facie case based solely on evidence of unexpected results); In re Geisler, 116 F.3d 1465, 1469 (Fed.Cir.1997) (observing that “a prima facie case of obviousness can be rebutted if the applicant (1) can establish ‘the existence of unexpected properties in the range claimed’ or (2) can show ‘that the art in any material respect taught away’ from the claimed invention.” (quoting In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974))); In re Corkill, 771 F.2d 1496, 1501 (Fed.Cir.1985) (“A greater than expected result is an evidentiary factor pertinent to the legal conclusion of the obviousness vel non of the claims at issue.” (citing United States v. Adams, 383 U.S. 39, 51–52, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966))); In re De Blauwe, 736 F.2d 699, 706 n. 8 (Fed.Cir.1984) (“A proper showing of unexpected results will rebut a prima facie case of obviousness.”
In re Peterson, 315 F.3d 1325, 1329 (Fed.Cir.2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”); see In re Geisler, 116 F.3d 1465, 1469 (Fed.Cir.1997); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Such overlap itself provides sufficient motivation to optimize the ranges.
“[E]ven a slight overlap in range establishes a prima facie case of obviousness.” Id. at 1329; see also In re Geisler, 116 F.3d 1465, 1469 (Fed.Cir.1997) (finding prima facie obviousness where range of prior art reference (100–600 Angstroms) overlapped the claimed range (50–100 Angstroms)); In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990) (holding a claimed invention obvious because claimed range (“more than 5% to about 25%” carbon monoxide) abutted range of prior art (“about 1–5%” carbon monoxide)); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (finding prima facie obviousness where the claimed range of the prior art reference (0.020–0.035% carbon) overlapped the claimed range (0.030–0.
"[E]ven a slight overlap in range establishes a prima facie case of obviousness." Id. at 1329; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (finding prima facie obviousness where range of prior art reference (100-600 Angstroms) overlapped the claimed range (50-100 Angstroms)); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (holding a claimed invention obvious because claimed range ("more than 5% to about 25%" carbon monoxide) abutted range of prior art ("about 1-5%" carbon monoxide)); In re Malayan, 499 F.2d 1297, 1303 (CCPA 1974) (finding prima facie obviousness where the claimed range of the prior art reference (0.020-0.035% carbon) overlapped the claimed range (0.030-0.
The presumption can be rebutted if it can be shown that the prior art teaches away from the claimed range, or the claimed range produces new and unexpected results. Iron Grip, 392 F.3d at 1322; In re Geisler, 116 F.3d at 1469; Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n. 3 (Fed. Cir.1993) ("[W]hen the difference 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 in range or value is minor.") (emphasis omitted); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Here, Align argues that Dr. Truax's appliances "were made sequentially every 4 to 6 weeks," and thus did not overlap the claimed range.
In this type of claim, a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Where the "claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap."