Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE GIM F. LEE, JR.
Appeal No. 92-1421
May 27, 1993
Application for Patent filed October 6, 1988, Serial No. 254,519. Polyphenylene Ether Resin Compositions which are Highly Resistant to Delamination.
Francis T. Coppa et al. for appellant
Supervisory Primary Examiner--James J. Seidleck
By the Board:
There are two rejections before the Board. All claims are rejected under 35 U.S.C. § 102. All claims are also rejected under 35 U.S.C. § 103.
A five-member majority (Serota, Chairman; Goldstein, Lovell, McCandlish, and W. Smith, Examiners-in-Chief) believe that the rejection based on 35 U.S.C. § 102 should be affirmed. All agree that Lee's description of a melt index range of >=0.1 to <=40 is a description of 0.1. Examiners-in-Chief McCandlish and W. Smith believe there are other reasons why the rejection based on 35 U.S.C. § 102 should be affirmed. Examiners-in-Chief Pellman and Steiner believe that the rejection based on 35 U.S.C. § 102 should be reversed.
All members of the panel believe that the rejection based on 35 U.S.C. § 103 should be affirmed.
Examiner-in-Chief Goldstein's plurality opinion, Examiner-in-Chief W. Smith's concurring opinion, and a dissenting opinion of Examiners-in-Chief Pellman and Steiner follow.
This appeal is from the examiner's final rejection of claims 1 to 4, 10 to 14, 24 and 25. Claims 5 to 9, 15 to 23, 26 and 27 have been withdrawn from further consideration by the examiner under 37 C.F.R. 1.142(b).
Appellant has expressly asserted that the claims should be taken to stand or fall together. Thus, we shall reproduce claim 1 below and limit subsequent comments to that claim:
1. A thermoplastic composition characterized by a significantly reduced tendency to delaminate, comprising
(a) a polyphenylene ether resin, optionally in combination with at least one unmodified vinyl aromatic polymer, and
(b) at least one polyolefin resin having a melt index of less than about 5 grams/10 minutes.
The sole reference relied on by the examiner on appeal is:
Lee et al. (Lee) 4,584,334 Apr. 22, 1986
All of the appealed claims have been finally rejected under 35 U.S.C. 102(b) as being anticipated by Lee. We shall affirm this rejection.
The polyolefin resin which is component (b) of appellant's claimed composition is limited as "having a melt index of less than about 5 grams/10 minutes." It is uncontroverted that, except for the melt index value, essentially all of the compositions disclosed in the reference are within appellant's claim recitation. With respect to the polyolefin resin, the reference discloses a "preferred" range of "melt index of >=0.1 to <=4.0."
*2 In our view, the explicit disclosure of a composition based on a polyolefin resin having a melt index of 0.1 [FN1] represents a specific disclosure of a discrete embodiment of the invention disclosed by Lee which amounts to a complete description and, thus, an anticipation of appellant's claim 1. It has long been held that the disclosure in the prior art of any value within a claimed range is an anticipation of the claimed range. See, merely for example, In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA1976). We discern no reason for treating the specific value disclosed in the reference as the lower limit of a range any differently from any other single value disclosed in a reference. [FN2] Thus, on the record before us, we conclude that the reference, at least on its face, anticipates the invention claimed here.
Appellant's reliance on the decision in In re Arkley, 455 F.2d 586, 172 USPQ 524 (CCPA1972), is ill placed. It will be immediately apparent from the preceding discussion that the facts in this case do not involve any "need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference." As we have already indicated above, there are no other variables to distinguish the reference disclosure from appellant's claims. That is to say, all of the compositions in the reference which utilize a polyolefin resin having a melt index of 0.1 are within (anticipate) appealed claim 1.
The examiner has also rejected all of the appealed claims under 35 U.S.C. 103 as being unpatentable over the disclosure of Lee for reasons of obviousness. We shall affirm this rejection.
We understand that alternative grounds of rejection under 35 U.S.C. 102 and 103 are conventionally relied on by examiners in the event that they should be found to have erred in their conclusion that the claimed invention was actually described in a single reference as required by 35 U.S.C. 102. We consider this practice to be prudent and encourage it. We shall here treat the rejection for obviousness without reference to the above holding of anticipation. We shall affirm this additional rejection for the reasons which follow.
The range recited in the here appealed claims for "melt index of less than about 5 grams/10 minutes" substantially overlaps the range disclosed in the reference, i.e., the degree of overlap is not insignificant. It may in fact very well be that melt indexes below 0.1 are completely impractical and that appellant's claim recitation simply represents a substantial portion of the lower end of the range disclosed in the reference, i.e., the two ranges have the same actual lower limit.
Since the compositions of the reference and those encompassed by the appealed claims are identical in all other respects, this substantial overlap or commonality of ranges is sufficient in and of itself to support a conclusion of obviousness, in the absence of adequate countervailing evidence of unobviousness, e.g., unobvious properties in the compositions of the appealed claims. In re Malagari, 499 F.2d 1297, 182 USPQ 549 (CCPA1974).
*3 Appellant's compositions are asserted to exhibit an enhanced freedom from delamination under high shear conditions compared to the broader class of compositions disclosed in the reference. This property is not mentioned in the reference, although all of the other advantageous properties disclosed in appellant's specification appear to be similarly disclosed in the reference. The evidence in appellant's specification which is relied on to establish unobviousness relates to the lamination resistance property. For the following reasons, we find that the only evidence of unobviousness of record is far from adequate to outweigh the evidence of obviousness.
Appellant's claim recitation of "less than about 5 grams/10 minutes" is indefinite, perhaps sufficiently so that a rejection under the second paragraph of 35 U.S.C. 112 would have been appropriate. For purposes of analyzing appellant's evidence, we shall interpret the recitation in what we consider to be a reasonable manner. Since it is inarguable that a recitation of "about 5 grams/10 minutes" reads on values substantially higher than 5 grams/10 minutes, [FN3] it follows that the value of 5 grams/10 minutes itself is encompassed within the claim recitation "less than about 5 grams/10 minutes." Sample No. 12 in Table 4 of appellant's specification (page 16) demonstrates that a melt index of 5 grams/10 minutes gives an unsatisfactory result in appellant's claimed composition. For this reason alone, we would conclude that the evidence fails to demonstrate unobvious properties for appellant's claimed compositions. An additional significant defect in the evidence presented is that the next lower value illustrated (Sample No. 10) has a melt index of 2.0. A chemist's instinct alone, particularly when coupled with ordinary knowledge of the real world behavior of materials, is adequate cause to expect the results for melt index values such as 4.8 and 4.9 (within the claimed range by any interpretation) to more nearly resemble those for 5.0 than those for 2.0. Thus, even if the claims were more definitely recited so as to exclude Sample No. 12, the evidence presented would not be adequate to demonstrate an unobvious result critically associated with the claim limitation.
It has not escaped our notice that no units were set forth for the melt index values disclosed in the reference. Since the reference is commonly owned with this application and there is partially common inventorship, we have taken appellant's failure to raise this issue as an indication that it would have been understood by one of ordinary skill in the art that the grams/10 minutes units represented a conventional standard of measurement.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Charles N. Lovell
FN1. It is this specific disclosure of the lower limit of the range for melt index that the examiner relied on. See the last line of the paragraph bridging pages 3 and 4 of the examiner's answer on appeal.
FN2. An expanded panel was convened in this case because it came to light that the Examiners-in-Chief were not unanimous on this issue and that, as a result, inconsistent decisions could be reached by different panels.
FN3. See, merely for example, In re Aronberg, 198 F.2d 840, 95 USPQ 90 (CCPA1952); In re Ayres, 154 F.2d 182, 69 USPQ 109 (CCPA1946).
*4 H.E. McCandlish and W.F. Smith
We agree with the plurality that Lee is an anticipatory reference and provides a sufficient evidentiary basis for a conclusion of obviousness. However, we reach these conclusions for different reasons.
Anticipation is a question of fact. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed.Cir.1986). The inquiry as to whether a reference anticipates a claim must focus on what subject matter is encompassed by the claim and what subject matter is described by the reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 218 USPQ 781, 789 (Fed.Cir.1983), cert. denied, 465 U.S. 1026 (1984), it is only necessary for the claims to " 'read on' something disclosed in the reference, i.e., all limitations in the claim are found in the reference, or 'fully met' by it." Where, as here, a reference describes a class of compositions, the reference must be analyzed to determine whether it describes a composition(s) with sufficient specificity to constitute an anticipation under the statute. See In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA1978). [FN1]
Turning to the facts of this case, claim 1 is directed in its broadest sense to compositions which comprise a polyphenylene ether resin and a polyolefin resin having a melt index of less than about 5 grams/10 minutes. Lee describes compositions which comprise a polyphenylene ether resin and a linear low density polyethylene (LLDPE), a polyolefin. The preferred LLDPE resins have a melt index of >=0.1 to <=40. [FN2]
Among the multitude of compositions disclosed by Lee are those which comprise a polyphenylene ether resin and a LLDPE resin having a melt index of >=0.1 (the lowest melt index value disclosed by Lee) to "less than about 5" (the highest melt index value included by the claims on appeal). We conclude that these compositions are described with sufficient specificity by Lee that Lee anticipates claim 1.
Contrary to appellant's argument, there is no need to pick and choose among several unrelated disclosures in Lee as in In re Arkley, 455 F.2d 586, 172 USPQ 524 (CCPA1972). Appellant has not proffered any evidence which establishes that the claimed compositions which are described in Lee do differ in a structural sense. See, In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA1979). Rather, the only evidence of record is directed to establishing that the claimed compositions have an unexpected property of resisting delamination. As set forth in In re Spada, 911 F.2d 705, 15 USPQ2d 1655, 1658 (Fed.Cir.1990), "When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested by the prior art."
*5 While not clearly delineated by the plurality, the reason this panel was expanded was to determine whether the end points of ranges disclosed in a reference should be treated as discrete species or working examples. [FN3] The determination of what specific compositions are described in a reference where a property of a component of the composition is disclosed in terms of a range of values, as here, must be made on a case by case basis. The endpoints of a range may have greater or lesser significance depending on the total disclosure of the reference. The attempt of the plurality to arrive at a hard and fast rule on the significance of an end point value of a range, in order to determine whether a reference is anticipatory or only constitutes evidence of obviousness, is futile. Such a rule is bound to be defined more by its exceptions. Rather, our efforts should be directed to emphasizing that issues such as these must be considered on a case by case basis. As stated by the court in In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA1958):
[We] deem it advisable to reiterate the warnings given in the past by Judge Hatfield in Conover v. Downs, 17 C.C.P.A. (Patents) 587, 592, 35 F.2d 59, 3 USPQ 58, 60, and Judge O'Connell in In re Newton, 38 C.C.P.A. (Patents) 877, 880, 187 F.2d 337, 88 USPQ 554, 556, that undue liberties should not be taken with court decisions, which should be construed in accordance with the precise issue before the court, and that a fertile source of error in patent law is the misapplication of a sound legal principle established in one case to another case in which the facts are essentially different and the principle has no application whatsoever.
The plurality focuses only on the composition of Lee where the LLDPE resin component has a melt index of 0.1 since that is the lower end point value and does not set forth whether the other compositions disclosed by Lee containing a LLDPE resin component having a melt index value within the claimed range are also anticipatory. Without clarifying whether these other compositions are also described with sufficient specificity so as to support a finding of anticipation, the plurality, in effect, elevates the composition of Lee where the LLDPE resin component has a melt index value of 0.1 to a status beyond any other composition described by Lee which is encompassed by the claims on appeal. We see no basis on this record for such disparate treatment.
Nor is it apparent from the dissent why each of the compositions of Lee which are encompassed by the claims on appeal is not described with such specificity that it should be considered anticipatory. The use of a range to set forth the melt index value of the LLDPE component of the composition of Lee is only a short hand way of describing a multitude of discrete compositions. The statement of the dissent that the determination of anticipation under the present circumstances depends on the "extent of overlap" misses the point. The number of compositions specifically described by Lee which are encompassed by the claims on appeal, i.e., "extent of overlap," is of no concern since description of one will support a finding of anticipation. In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA1971). Nor is it apparent what picking and choosing is needed in order to determine what resin compositions are specifically described in Lee. All that is needed to implement the disclosure of Lee is to combine any polyphenylene ether resin with a LLDPE having a melt index value within the disclosed range. While the determination of what specific compositions are disclosed by a reference may be difficult in a given case, we do not find any difficulty in making that determination in this case.
*6 The dissent's reliance upon decisions in such cases as In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA1976) and In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA1971) is misplaced since admittedly the court did not have a section 102 before it for decision, only rejections under 35 U.S.C. § 103. [FN4]
The dissent's statement that we are inconsistent with the purported "policy" of our reviewing court that rejections "based on overlapping ranges" may be overcome by objective evidence is not understood. Again, the cases relied upon by the dissent as apparently enunciating such a "policy" were not concerned with a section 102 rejection. Statements in such cases concerning what effect an overlap of ranges might have in the context of an obviousness determination under 35 U.S.C. § 103 have little relevance in determining as a factual matter whether Lee discloses a composition with sufficient specificity that the reference should be considered an anticipation of the claims before us.
To the extent the dissent relies upon the specification data concerning the relative ability of the claimed and prior art compositions to resist delamination, we note that neither appellant nor the dissent set forth how these data establish that the claimed compositions differ from those described in Lee in structure rather than properties. In re Spada, supra, Titanium Metals Corp. of America v. Banner, 778 F.2d 687, 227 USPQ 773 (Fed.Cir.1985), In re Grose, supra.
Lee also describes compositions which comprise polyphenylene ether resins and a LLDPE resin having a melt index in the range of greater "than about 5 grams/10 minutes" (the claimed upper limit) to <=40 (Lee's upper disclosed limit). Of these compositions, those which include a LLDPE resin having a melt index value just outside the value required by claim 1 on appeal establish a prima facie case of obviousness. Titanium Metals Corp. of America v. Banner, supra. We agree with the plurality that the evidence of nonobviousness relied upon by appellant is not entitled to sufficient weight so as to outweigh the evidence of obviousness. Thus, we agree that the claimed subject matter would have been obvious to one of ordinary skill in the art at the time of the present invention.
FN1. That the focus should be on determining what compositions are specifically described by the reference is illustrated by the decision in In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA1962). There, the court found that a broad generic description of compounds in a reference which encompassed the claimed compounds did not describe the claimed invention within the meaning of 35 U.S.C. § 102(b). However, the court found a more limited class of compounds was disclosed in the reference and determined that each member of the limited class was described by the reference and that it was of no moment that the individual compounds were not specifically named or shown by structural formula in the reference. It was not the number of compounds found by the court to be described in this limited class which was the basis of the finding of anticipation. Rather, the finding was based on the fact that the reference disclosed individual compounds with sufficient specificity.
FN2. Like the plurality, we also assume that the units used for measuring the melt index of the LLDPE resin of Lee are the same as those used in the present invention.
FN3. To the extent that Lee specifically describes a composition which is within the claims on appeal, it does not matter for the purpose of finding anticipation that Lee actually made such a composition, i.e., actually reduced that composition to practice, or only describes such a composition as part of his invention. In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA1982). Every form of rebuttal of a finding of anticipation available to a patent applicant, e.g., the reference is nonenabling, the claims are in fact directed to novel subject matter, can be presented regardless of whether the description of a claimed invention is found in a reference as a working example/actual reduction to practice or only as part of the descriptive portion of the reference. Of course, the burden a patent applicant is under in providing such a rebuttal will vary depending upon the specificity with which the reference describes the claimed invention.
FN4. In Russell, the first reference relied upon in the § 103 rejection was stated in the opinion to describe one component of the claimed composition in a generic sense. A second reference was used to establish the obviousness of using the specific material claimed in the composition of the first reference. The relevance of these factors to the present facts is not apparent.
CONCURRING-IN-PART AND DISSENTING-IN-PART
I.R. Pellman and A.J. Steiner
*7 We disagree with the affirmance of the examiner's rejection under 35 U.S.C. 102. [FN1] We would reverse the examiner's rejection of the appealed claims under 35 U.S.C. 102 for failing to establish a prima facie basis to deny patentability to the claimed invention under that statutory provision.
The appealed claims define a class of compositions which overlap to a small extent those disclosed by Lee. In our opinion, such circumstances do not support the determination of anticipation under 35 U.S.C. 102, but a prima facie case of obviousness under 35 U.S.C. 103 which can be rebutted by objective evidence demonstrating that the claimed narrow class of compositions exhibits properties which are unexpectedly different from the disclosed broader class of compositions.
Polyphenylene ethers (PPE), a well-known class of engineering resins, suffer from certain known disadvantages, such as poor flame resistance, low impact strength and brittleness. Conventional practices in this particular art compensate for such shortcomings by blending a polyolefin, such as polyethylene, with PPE. The polyolefin additive functions as a lubricating agent and/or impact modifier when used at low levels. Appellant reports that the incompatibility of PPE and polyolefin additives results in delamination.
Appellant solves the indicated delamination problem by restricting the melt index of the polyolefin additive to less than about 5 grams/10 minutes. The relevant data in Table IV on page 16 of the specification indisputedly demonstrate the occurrence of a significant amount of delamination when a polyethylene having a melt index of 5, 6 or 20 grams/10 minutes is the blend additive; whereas, very little separation occurs when a polyethylene having a melt index of 0.8, 1 or 2 grams/10 minutes is used.
Lee discloses a composition containing a polyphenylene ether and a polyethylene additive. Lee neither recognizes the delamination problem solved by the claimed invention nor discloses any particular composition containing a polyethylene additive having a melt index less than 5 grams/10 minutes satisfying the requirements of the appealed claims. In short, Lee's disclosure does not describe the claimed invention within the meaning of 35 U.S.C. 102 because it does not identically disclose a composition satisfying each and every element of the claimed invention. [FN2]
Lee does disclose a rather broad range of melt indexes of 0.1 to 40 (grams/10 minutes) [FN3] from which one having ordinary skill in the art may select a value, all values presumably being of equal consequence. The outer boundary of 0.1 gram/10 minutes is not disclosed in the context of a working example, but as a limitation on the operative range of melt indexes for the polyolefin additive. That some of the claimed compositions are buried within Lee's broad disclosure and brought to light by appellant, does not mean that Lee describes the claimed invention within the meaning of 35 U.S.C. 102.
*8 We recognize that in cases involving an overlap of a claimed invention and applied prior art, anticipation under 35 U.S.C. 102 can arise even though an applied reference does not exemplify a species falling within the overlap. Anticipation under 35 U.S.C. 102 in such cases would appear to depend upon the extent of overlap which determines the amount of picking and choosing necessary to arrive at the claimed invention. In situations involving virtually little or no selectivity, a reference may be considered to describe the overlapping portion of a claimed invention within the meaning of 35 U.S.C. 102. In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA1982); In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA1978); In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA1962). However, where a prior art disclosure is extremely broad, a prima facie case of obviousness under 35 U.S.C. 103 may not even arise. In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed.Cir.1992). Between these extremes, as in the situation before us, the overlap would have rendered the claimed invention prima facie obvious under 35 U.S.C. 103. Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed.Cir.1989); In re Malagari, supra; In re Susi, supra. Thus, patentability under 35 U.S.C. 102 and 35 U.S.C. 103 must be resolved on a case-by-case basis, not by a litmus test determined by an end point (Plurality Opinion) or any overlap whatsoever (Concurring Opinion).
Unable to point to any disclosed anticipating composition, the plurality holds, as a matter of law, that the endpoint of a disclosed range for a parameter constitutes a description of a patentability-defeating species under 35 U.S.C. 102 of a composition comprising two polymers, one of which exhibits said endpoint parameter. This is pure fiction.
The plurality justifies its "affirmance" by stating "it has long been held that the disclosure in the prior art of any value within the claimed range is an anticipation of the claimed range," [FN4] and refers to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA1976). [FN5]
The germane language in In re Wertheim, supra, relied upon by the plurality, is dicta. For convenience, we quote from 191 USPQ 100:
Of course, the disclosure, in the prior art of any value within a claimed range is an anticipation of the claimed range. We appreciate the arguments made in In re Malagari, 499 F.2d 1297, 182 USPQ 549 (CCPA1974), and the discussion in In re Orfeo, 58 CCPA 1123, 440 F.2d 439, 169 USPQ 487 (1971), to the effect that ranges which overlap or lie inside ranges disclosed by the prior art may be patentable if the applicant can show criticality in the claimed range by evidence of unexpected results. The rejections here are under § 103, not § 102, which requires us to consider appellants' argument that their invention and Pfluger's disclosure are directed to different purposes and that persons of ordinary skill in the art would not look to Pfluger 1963 for a solution to the problem addressed by appellants. See In re Orfeo, supra.
*9 Thus, the court in Wertheim, supra, acknowledged, without expressing disagreement, that objective evidence may be introduced to overcome rejections based on overlapping ranges, a policy inconsistent with the position of the plurality and our concurring colleagues.
Turning to the decision in Malagari, to which the court referred in In re Wertheim, and which is authored by the same judge as in Wertheim, we note the court considered a rejection under Section 102, but found it unnecessary to deal with said rejection. However, the court explicitly stated that the decision in In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA1960), in which the court used the language "anticipation" for a rejection of the type now before us:
hardly decides this case. First the court in Nehrenberg appears to have used the term "anticipated" as loosely as the board did here, in any event qualifying its use by saying "Aside from the carbon content," and we are not at all convinced that the rejection in Nehrenberg was under Section 102. Secondly, the Solicitor's quotation from Nehrenberg too artfully juxtaposes the end of one paragraph with a sentence taken from near the end of the next long paragraph, a practice which is to be discouraged. (182 USPQ at 553).
Thus, the court in Malagari did not sanction the practice that the plurality in the present case attributes to the dicta in Wertheim.
We refer to In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA1971), at 169 USPQ 428, wherein the court held:
if appellant can establish that his relatively narrow ranges yield unexpectedly superior results as against the broad Wei ranges as a whole, appellant will have established unobviousness of the claimed invention. See In re Luvisi, 52 CCPA 1063, 342 F.2d 102, 144 USPQ 646 (1965); In re Neave, 54 CCPA 999, 370 F.2d 961, 152 USPQ 274 (1967).
Appellant points to the fact that, whereas Wei teaches using an alkylolamide and lanolin in the ratio of from 2:1 to 100:1, the ratio in the claims here is limited to the relatively narrow range of from 1/2:1 to 7:1. Appellant contends that, within the ranges recited in the claims, a result occurs which is unexpected from Wei's teaching: clear solutions without filtration. There appears to be no dispute that appellant's compositions in fact possess this property or that it is advantageous. The issue is whether it would be unexpected in view of Wei.
The court thereafter reversed the Board's decision.
We appreciate that the rejection before the court was under Section 103. However, does the plurality suggest the Board in the Russell decision was unaware "it had long been held that the disclosure in the prior art of any value within a claimed range is an anticipation of the claimed range"?
*10 Compare In re Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA1964), wherein the court reversed the rejection and, in the penultimate paragraph, explained:
Generally speaking, there is nothing unobvious in choosing "some" among "many" indiscriminately. In re Rosicky, 47 CCPA 859, 276 F.2d 656, 125 USPQ 341. Here, however, the choice is based on a discovery by Lemin that some compounds, falling within a prior art genus, have a special significance. In short, Lemin has found that when the total number of carbon atoms in the ester and alkoxy substituents is within the range of 5 to 12, the compounds involved will have selective and potent herbicidal action (141 USPQ 815-816).
In our opinion, the plurality view is without precedential support. We do not share the plurality's fatal attraction to the endpoint of a disclosed range. The apparent visibility of an endpoint is not a license to create a patentability-defeating species under 35 U.S.C. 102 thereby depriving appellant of the opportunity to demonstrate that the selection of a polyolefin additive having a very restricted range of melt indexes unexpectedly solves the delamination problem.
THE REJECTION UNDER 35 U.S.C. 103.
In our opinion, the overlap of the claimed composition with Lee's composition would have given rise to a prima facie case of obviousness. Merck & Co., Inc. v. Biocraft Laboratories, Inc., supra. The burden, therefore, shifted to appellant to come forward with objective evidence of nonobviousness. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed.Cir.1992).
Appellant relies upon the data in Table IV at page 16 of the specification to demonstrate the criticality of the upper limit of 5 grams/10 minutes as the melt index of the polyolefin additive. We do not disagree with the plurality's view that the argued data do not evince the nonobviousness of the entire claimed class of compositions, since no composition having a melt index between 2 and 5 grams/10 minutes was tested. [FN6] Accordingly, we concur with the affirmance of the examiner's rejection under 35 U.S.C. 103.
THE CONCURRING OPINION
Our concurring colleagues go beyond the plurality's holding that a visible endpoint is a disclosed species and contend that every invisible species theoretically within the small degree of overlap generated by Lee's "short hand way of describing the multitude of discrete compositions" spells death for the claimed invention under 35 U.S.C. 102. Thus, they hold that Lee describes compositions comprising polyolefins having a melt index falling entirely within the disclosed range, e.g., a melt index of 2 grams/10 minutes. We suggest that the concurring view is out of step with prevailing patent jurisprudence recognizing that a claimed invention may be patentable even though it falls within a prior art disclosure, as a range within a range [FN7] or a species within a genus. [FN8]
FN1. Anticipation under 35 U.S.C. 102 is an essentially irrebuttable question of fact. See, for example, In re Malagari, 499 F.2d 1289, 182 USPQ 549, 553 (CCPA1974), wherein the court stated that anticipation "cannot be overcome by evidence of unexpected results or teachings away in the art." See also In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed.Cir.1990); In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA1982); In re Altenpohl, 500 F.2d 1151, 183 USPQ 38 (CCPA1974); In re Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA1973); In re Wilder, 429 F.2d 447, 166 USPQ 545 (CCPA1970). Indeed, a reference might reside in a nonanalogous art and yet constitute an anticipation of a claimed invention under 35 U.S.C. 102. In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA1982). We recognize that evidence may be introduced to overcome a rejection under 35 U.S.C. 102, e.g., evidence demonstrating that an applied reference is nonenabling [Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 223 USPQ 1168 (Fed.Cir.1984) ], to show that a recited characteristic is not inherent in a prior art article [In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA1980) ], or to show that an applied reference is not actually valid prior art under 35 U.S.C. 102. In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed.Cir.1989). However, such situations are not relevant to this appeal wherein appellant proffered evidence to demonstrate that the claimed narrowly defined compositions exhibit properties which are unexpectly superior to the broader disclosed compositions. Compare In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA1971).
FN2. Akzo N.V. v. U.S. International Trade Commission, 808 F.2d 1471, 1 USPQ2d 1241 (Fed.Cir.1987); American Hospital Supply Corp. v. Travenol Laboratories, Inc., 745 F.2d 1, 223 USPQ 577 (Fed.Cir.1984); Air Products and Chemicals, Inc. v. Chas. S. Tanner Co., 219 USPQ 223 (D.S.C.1983); In re Marshall, 578 F.2d 301, 198 USPQ 344 (CCPA1978); In re Arkley, 455 F.2d 586, 172 USPQ 524 (CCPA1972).
FN3. We also assume the same units were intended in the reference.
FN4. Again, appellant claims a composition comprising a polyolefin having a narrowly defined range of melt indexes.
FN6. We suggest, however, that procedural due process would have best been served had the examiner, in the first instance, apprised appellant of this perceived shortcoming in the argued evidence. Based on page 3 of the Reply Brief, it would appear that the examiner's treatment of the evidence may have lulled appellant into believing the examiner agreed with appellant's assessment of the argued data. In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984).
FN7. In re Waymouth, 499 F.2d 1273, 182 USPQ 290 (CCPA1974).
FN8. In re Lemin, supra.