Wednesday, March 28, 2018

CAFC in Brandt discusses the prima facie case of obviousness

The issues in the Brandt case:

Appellants make two arguments on appeal. First,
Appellants challenge the Board’s finding of a prima facie
case of obviousness based on Griffin’s disclosed coverboard
density range because that range does not facially
overlap with the ’858 application’s claimed coverboard
density range. Second, assuming the Board properly
found a prima facie case, Appellants contend that the
Board erred in finding that the prior art does not teach
away from the claimed invention.

There is discussion of the prima facie case of obviousness:

Given the back-and-forth nature of examination, it is
important for the examiner to have a few procedural tools
to aid her efforts to issue as patents only those claims
that meet the requirements of the Patent Act—the fundamental
obligation of the Patent Office. 35 U.S.C. § 2
(“The United States Patent and Trademark Office
. . . shall be responsible for the granting and issuing of
patents.”); id. § 131 (“The Director shall cause an examination
to be made of the application and the alleged new
invention; and if on such examination it appears that the
applicant is entitled to a patent under the law, the Director
shall issue a patent therefor.”). One of these procedural
tools is the prima facie case, an evidentiary burdenshifting
device available to the examiner in the initial
stage of examination. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471–72
(Fed. Cir. 1984). An examiner can find a prima facie case
of unpatentability upon initial review of the prior art or
on any other statutory condition of patentability. In re
Oetiker, 977 F.2d at 1445. If the examiner establishes a
prima facie case, the burden shifts to the applicant to
come forward with rebuttal evidence or argument. Id.; see
Mouttet, 686 F.3d at 1330. The examiner then considers
the evidence as a whole before reaching a conclusion on
the claims’ patentability under 35 U.S.C. § 103(a). Leo
Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir.

How close must the prior art be?

Appellants argue that the Board erred by applying a
per se rule that whenever the differences between a prior
art reference’s disclosed range and the application’s
claimed range are close, a prima facie case of obviousness
is established. Appellants’ Br. 11. We find no such error.
The Board did not apply a per se rule. Rather, it grounded
a prima facie obviousness conclusion on the facts
before it. The Board specifically agreed with the examiner’s
factual finding that the difference between the
claimed range and prior art range was “virtually negligible.”
J.A. 5. This finding accounted for manufacturing
tolerance levels because “precise results are not always
achieved and tolerance levels are usually taken into
account.” J.A. 143. The Griffin reference recognizes that
the composition and compressive strength of the coverboard
may vary through the addition of fillers during
manufacturing. J.A. 208. This is a simple case in the
predictable arts that does not require expertise to find
that the claimed range of “less than 6 pounds per cubic
feet” and the prior art range of “between 6lbs/ft3 and
25lbs/ft3” are so mathematically close that the examiner
properly rejected the claims as prima facie obvious. See
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(recognizing “that a prima facie case of obviousness exists
when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the
art would have expected them to have the same properties”
(citing Titanium Metals, 778 F.2d at 783));


Appellants posit that an examiner can only find a
prima facie case of obviousness if there is an overlap
between the claimed range and prior art range, relying on
our nonprecedential decision in In re Patel, 566 F. App’x
1005 (Fed. Cir. 2014). Appellants’ Br. 16. We disagree.
In Patel, the claims at issue were directed to a nonwoven
fabric comprised of polymer blends. 566 F. App’x at 1007.
The claims recited a first polymer blend to make up “from
26 weight percent to 80 weight percent” of the nonwoven
material, and the prior art disclosed a range for the first
polymer blend of 0.5 to 25 weight percent. Id. We vacated
the Board’s finding of a prima facie case based solely
on the closeness of the prior art reference’s disclosed
range because “the ranges d[id] not overlap and the prior
art d[id] not teach that a broader range would be appropriate.”
Id. at 1009. Patel recognized, however, that
prima facie rejections may be appropriate “where there is
a teaching in the prior art that the end points of the prior
art range are approximate, or can be flexibly applied.”


Patel thus highlights what may be required to
find a sufficiently minor difference between a facially nonoverlapping
claimed range and a prior art range such that
an examiner could prima facie reject claims. See Haynes,
8 F.3d at 1577 n.3. The nonbinding holding in Patel,
however, does not stand for the proposition advanced by
Appellants that a claimed range and prior art range must
overlap for an examiner to find a prima facie case.
Here, 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 coverboard 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 therefore
conclude that in this case the Board did not err by
affirming the examiner’s obviousness rejection.


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