Board of Patent Appeals Issues Decision on Optimization of Ranges

Happy New Year to all! But not such a happy new year for Applied Materials, Inc., a semiconductor manufacturer in California. Yesterday, Dec. 31, 2009, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a decision largely affirming a Patent Examiner's rejection of an Applied Materials patent application covering a key semiconductor manufacturing process.
Yesterday's decision revolves mainly around the issue of "optimization of ranges." To illustrate this issue, assume that the prior art for car-wash technology discloses the placement of water-dispensing nozzles in certain locations inside the car-wash. Let's say that a client invents a car-wash with water-dispensing nozzles placed in locations not disclosed in the prior art. Is this client's invention patentable? As a Florida patent attorney with over 10 years of experience dealing with patent applications, I get this question a lot. The answer is not so simple to explain.
With regard to the issue of "optimization of ranges," the Manual of Patent Examining Procedure states that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454 (CCPA 1955).
Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . 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." In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
The Applied Materials case involved a claim including the optimized calibration of a thin film-depositing element. The claim was rejected under 35 U.S.C. 103(a) for obviousness in light of the prior art, which generally disclosed optimization of thin-film depositing elements. The Board upheld the obviousness rejection due to a lack of criticality in the Applicant's choice of calibration of the thin film-depositing element, as evidenced by a lack of unexpected results.
This decision sheds light on the car-wash example above. If the water-dispensing nozzles are placed in novel locations with the expected result being increased car-washing capabilities, then the client's car-wash invention is probably obvious and not patentable. But if the locations of the water-dispensing nozzles leads to an unexpected result, such as the buffing of car paint, then the client's car-wash invention is non-obvious and may very well be patentable.
ABOUT THE AUTHOR: Mark Terry
As a recognized expert in intellectual property law, Mark Terry is Miami patent attorney regularly featured in legal publications and academic journals. Mr. Terry has written numerous articles on intellectual property and frequently speaks at conferences and symposiums on patent and trademark issues.
Mark Terry is a registered patent attorney in Miami concentrating exclusively on patent, trademark, copyright and licensing matters. He focuses primarily on the preparation and prosecution of U.S. and international patent and trademark applications, as well as related litigation, including enforcement and defense. In addition, Mr. Terry provides patent infringement and non-infringement opinions and freedom-to-operate assessments.
Mr. Terry is Board Certified by the Florida Bar in Intellectual Property Law. Certification is the highest level of recognition by The Florida Bar of the competency and experience of attorneys.