July 24, 2014

Prior Art’s Disclosure of Result-Effective Variables that Overlap Claimed Ranges Is Sufficient to Support a Finding of Obviousness

In affirming a finding of obviousness by the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board), the U.S. Court of Appeals for the Federal Circuit found that the prior art’s disclosure of dimensions that overlapped claimed ranges was sufficient to support a finding of obviousness, where the disclosed dimensions were result-effective variables.  In re Applied Materials, Inc., Case Nos. 11-1461, -1462, -1463, -1464 (Fed. Cir., Aug. 29, 2012) (Linn, J.) (Newman, J., dissenting). 

This case involved four patents with claims directed to “sufficiently rigid” polishing pads for “planarizing” or flattening the surface of a substrate during the formation of an integrated circuit.  The claimed polishing pads had grooves with specific ranges of depth, width and pitch dimensions.  The claims covering these pads in all four patents were rejected by the examiner in separate ex partere examinations.  The Board affirmed the examiner’s obviousness rejections, and the four appeals from the Board’s decisions were consolidated before the Federal Circuit.

The patentee argued on appeal that the claimed invention was patentable over the prior art cited by the examiner because “the prior art did not specify the result of each purported result-effective variable.”

The Federal Circuit affirmed the Board’s conclusions that the dimensional values disclosed in the prior art overlapped the claimed ranges and that there was substantial evidence to support the Board’s finding that the disclosed dimensions were known to be result-effective variables.  The Court explained that the overlap itself provides sufficient motivation to optimize the ranges.  The Court found that the prior art need only recognize that a property is affected by a variable in order for it to be result effective and that it is not necessary for the prior art to provide the exact method of optimization for the variable. 

The Court mentioned that evidence that the claimed range is critical because it achieves unexpected results that can be used to rebut a prima facie case of obviousness established by the overlap of prior art values with the claimed range.  However, the patentee was unable to provide any such evidence.  The Court also found that the patentee failed to provide sufficient evidence showing a nexus between the patentee’s commercial success in the market and the patented subject matter.     

In dissent, Judge Newman argued that despite the art of polishing pads being crowded, there was no other product in the market that had the combination of width, depth and pitch of the inventions claimed in the patents.  Further, Judge Newman noted that the patented product had achieved commercial success by displacing the very prior art pads that are now being used to render the patents obvious.  Judge Newman accused the majority of “simply rubber-stamping agency fact-finding,” as the PTO offered no suggestion in the prior art of changing the parameters in the manner done by the patentee.

© 2014 McDermott Will & Emery

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