July 30, 2021by Yanhong Hu1

What does “up to at least 150 volts” mean? Does it mean 150 volts is a maximum voltage due to the use of the words “up to” or a minimum voltage due to the use of the words “at least”? This was the problem the Patent Trial and Appeal Board (“Board”) in Ex parte Bagehorn (Appeal 2020-004760) had to solve.

Claim 1 was the sole independent claim on appeal and was directed to a method for the electrolytic polishing of a metallic substrate. The claimed method included a step of “applying a current at a voltage of 270 to 315 volts.”

The Examiner rejected claim 1 as obvious over Clasquin in view of Kodera. Regarding the claimed voltage of “270 to 315 volts,” the Examiner believed Clasquin described an overlapping voltage range based on Clasquin’s disclosure in ¶ 49 that “it has been found that higher voltage up to at least 150 volts can be used.” The Examiner interpreted the phrase “up to at least 150 volts” as teaching a range of “at least 150 volts” and pointed to Clasquin’s disclosure in ¶ 63 that “[c]urrent densities as high as at least 225,000 A/m2 can be used at applied voltages of 150 volts or more” for “nickel based alloy 718” as a support.

Appellant argued the Examiner’s interpretation of the phrase indicated that he ignored the preceding words “up to” and failed to read Clasquin’s disclosure in ¶¶ 49 and 63 in the context of Clasquin as a whole. In particular, Appellant argued “up to at least 150 volts” implied a ceiling of 150V, while the words “at least” provided some flexibility to that ceiling so that Clasquin suggested a maximum voltage that is slightly higher than 150V, but not as high as the lower boundary of 270V recited by claim 1. Appellant further argued that the disclosure in ¶ 49 served as an umbrella disclosure and that Clasquin’s specific working examples, including ¶ 63, would be understood by a skilled artisan as falling within that umbrella. In addition, Appellant noted Table 5 of Clasquin, which disclosed more than two dozen examples, used a maximum voltage of 150V.

The Board sided with the Appellant. The Board agreed that the Examiner’s interpretation of the phrase did not adequately account for the words “up to,” which, by their plain meaning, suggested a maximum, not a minimum. The Board noted Clasquin disclosed in ¶ 49 that for certain metals, polishing with voltages above 40V was undesirable because voltages above 40V resulted in loss of luster; however, certain other metals did not demonstrate the same problem and it was for those metals that “higher voltages up to at least 150 volts can be used.” Therefore, the Board held that, in context, the words “at least” did not wholly negate the preceding words “up to” but rather suggested the ceiling indicated by the words “up to” may be somewhat higher than 150V. The Board agreed with the Appellant that this interpretation was supported by the examples disclosed in Table 5 of Clasquin and was consistent with Clasquin’s other disclosures in, for example, ¶¶ 57 and 95.

Regarding Clasquin’s disclosure in ¶ 63, the Board noted “150 volts or more” – in isolation – was consistent with the Examiner’s understanding of Clasquin. However, the Board found that when it was read in view of Clasquin’s other disclosures, a skilled artisan would not have understood ¶ 63 as suggesting that any voltage above 150V could be used even for nickel 718, as evidenced by the dozen nickel 718 based compositions disclosed in Table 5, for which voltages only ranged from 9.7V to 150V.

Therefore, the Board agreed with the Appellant and found Clasquin as a whole as suggesting a voltage ceiling of approximately 150V, with some flexibility. Because 270V, the recited lower boundary of the voltage range, was 80% greater than the 150V suggested by Clasquin and because the Examiner did not establish a person of ordinary skill in the art would have understood Clasquin as teaching or suggesting voltages as high as those of claim 1, the Board reversed the Examiner’s obviousness rejection.

Takeaway:  Although the term at issue in Bagehorn is not a claim term but a phrase in a cited reference, the interpretation principle is the same. That is, terms and phrases should be given the interpretation as understood by a person of ordinary skill in the art in light of the disclosure as a whole. Nevertheless, the confusion could have been avoided if a phrase such as “up to around 150 volts” had used instead of “up to at least 150 volts.”

Judges:  J. C. Housel, C. C. Kennedy, and J. E. Inglese


January 19, 2021by Beau Burton

Claimed ranges are prima facie obvious when they overlap a prior art range. When there is no overlap, Examiners will bridge the gap by arguing that the parameter of the range is a result effective variable (such that it would have been obvious to go beyond the literal range) or rely on Titanium Metals to assert that the claimed range is obvious simply because it is “close enough” to the prior art range. The Examiner in In re Yanez tried both of these approaches but failed. Appeal No. 2020-001246 (PTAB Dec. 10, 2020) (non-precedential).

The claim at issue in Yanez required a nickel-aluminide alloy comprising, among other things, 0.15 wt % or less zirconium (Zr). The prior art, Liu, disclosed a nickel aluminide composition that included “from about 0.1 to about 1.5[atomic]% zirconium.” The Examiner converted the lower endpoint of 0.1 at.% in Liu to 0.17 wt%.

The Examiner recognized that Liu’s lower endpoint of 0.17 wt% exceeded the Applicant’s upper limit of 0.15 wt%. However, the Examiner argued: (1) “0.17 wt% is considered close to presently claimed 0.15% or less according to MPEP 2144.05 I”; and (2) “Liu expressly disclose[s] varying amounts of Zr … leads to different YS [(yield strength)] and elongation as illustrated in Figure 2a and 2b … [I]t would have been obvious to one skilled in the art to have adjusted the result-effective variable of Zr amount, in the Nickel-aluminide alloy of Liu in order to achieve a desired VS [sic, YS] and elongation.”

The Board rejected the Examiner’s “close enough” position, stating “no evidence that Liu’s about 0.17 wt% Zr is sufficiently close to the Appellant’s 0.15 wt% Zr to have suggested 0.15 wt% Zr to one of ordinary skill in the art.”

Next, the Board found “[t]he result effective variable in Liu’s Figures 2a and 2b is [molybdenum] Mo concentration, not [zirconium] Zr concentration.” The Board further noted that an example in Liu having 0.3 at% of Zr had a yield strength between examples containing 0.5 at% and 1.0 at% of Zr; suggesting the Zr content did not correlate with yield strength.

Absent a factual basis to support the Examiner’s positions, the Board reversed the obviousness rejection.

Takeaways: When facing an obviousness rejection where there is a nonoverlapping range, it is important to assess how the prior art range is arranged relative to the claimed range and what the prior art teaches about the range.

The “close enough” rationale from Titanium Metals made sense in that case because the prior art disclosed two compositions (no ranges were described) and the claimed composition fell between those two compositions. Thus, while there was no overlap with the specific compositions in Titanium Metals, a skilled artisan would have expected that an intermediate composition would have the same properties.

The rationale from Titanium Metals starts to break down when the nonoverlapping claimed range is next to the prior art range and the prior art does not teach that the range is flexible (i.e., does not use the modifiers “about” or “approximate”) or suggest that the properties outside the disclosed range would be expected to be the same (i.e., does not state that any concentration is acceptable before setting forth preferred ranges). See In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014) (nonprecedential) (rejecting the PTO’s position that proximity of nonoverlapping ranges alone is sufficient to establish a prima facie case of obviousness). In Yanez, while the prior art used the modifier “about,” it appears that the Board concluded a skilled artisan would not have expected the claimed composition to have the same properties since the concentration of Zr did not correlate with the yield strength (i.e., the lowest concentration of Zr had an intermediate yield strength).

Yanez also shows the importance of assessing the prior art teachings surrounding the alleged result-effective variable. Here, the data relied on by the Examiner showed that the result effective variable was a completely different element than asserted by the Examiner. As such, there was no basis for the Examiner’s rejection. For another good illustration on this topic, readers are referred to Matthew Barnet’s recent blog, “Nonobviousness: When a Result-Effective Variable Is Different from the Claimed Variable.”

Judges: T. Owens, B. Baumeister (concurring), B. Range


December 17, 2020by Beau Burton

In Ex parte Song, the Patent Trial and Appeal Board (“Board”) reversed an Examiner’s obviousness rejection after finding the Examiner failed to establish that it would have been obvious to optimize a ratio as claimed through routine optimization. Appeal No. 2020-004060 (PTAB Nov. 18, 2020) (non-precedential).

In Song, the claims were directed to a touch panel including an adhesive film and a substrate, the adhesive film including a semi-cured adhesive composition including: (A) a polymerizable acrylic based composition; and (B) a polymerizable epoxy and/or vinyl ether composition, wherein “the ratio of the radical polymerizable composition [(A)] to the cation polymerizable composition [(B)] is 1:1.”

The Examiner relied on a primary reference that disclosed a double-sided pressure-sensitive adhesive (PSA) sheet for fixing a touch panel to a display surface, where the PSA was acrylic based and included a photoinitiator (i.e., the (A) component).

For the (B) component and the ratio of (A) to (B), the Examiner relied on a secondary reference. The secondary reference disclosed polymerizable epoxide systems and ionic photoinitiators (i.e., component (B)) and mentioned the optional presence of acrylic compounds (i.e., component (A)). As for the ratio, the secondary reference stated “[t]he proportion of the individual constituents in the adhesive composition can be varied within wide ranges and are not particularly critical” and that “[t]he ethylenically unsaturated substance [(A)] which can be polymerized by free radicals can be 5–50% wt%, preferably about 10 wt%, of the ionically polymerizable epoxide system [(B)].” This corresponds to a ratio of (A) to (B) from 1:20 to 1:2.

The Examiner recognized that the prior art range did not encompass the claimed ratio of 1:1, but reasoned “[a]s the workability of the adhesive is a variable that can be modified, among others, by adjusting the amount of the individual components, the precise amount would have been considered a result effective variable by one having ordinary skill in the art” so such a person “would have optimized, by routine experimentation, the ratio of ionically polymerizable peroxide system to ethylenically unsaturated substance that is polymerized by free radicals in the prior [art] to obtain the desired adhesive workability.”

The Board was not persuaded. Although the prior art taught that the amounts of the individual components could be varied within wide ranges, it also taught that they were not particularly critical and neither the broad ratio range of 1:20 to 1:2 nor the preferred ratio of 1:10 overlapped with the claimed ratio of 1:1. Accordingly, the Board found that Examiner failed to establish that routine optimization would have led a person of ordinary skill in the art to the ratio of 1:1.

Takeaway: The CAFC has held that proximity of nonoverlapping ranges alone is not sufficient to establish a prima facie case of obviousness. Thus, Examiners often resort to “routine optimization” or “result effective variables” to bridge the gap between the prior art and the claims. In Song, the Examiner’s attempt to bridge the gap was unsuccessful because the prior art’s range was not close enough to the claimed range and the preferred prior art ratio was 10:1, which is in the wrong direction if the optimum ratio is supposed to be 1:1.

The rationale here is similar to In re Sebek, 465 F.2d 904, 907 (CCPA 1972), where the CCPA held that when the prior art indicates that an optimum should be sought within a range, the determination of optimum values outside that range may not be obvious. In Sebek the case for nonobviousness was stronger because there were indications elsewhere that suggested that the optimum values would not be within the claimed range. Nevertheless, when confronted with a nonoverlapping prior art range, no indication in the prior art that the endpoints are flexible enough to encompass your claimed range, and the prior art’s preferred ranges lead away from your claimed range, there is a strong case for nonobviousness as in Song and Sebek.

Judges: Owens, Kennedy, McManus