Whither Obviousness: Narrow Range Anticipated by Broader Range in Disclosure

By Dennis Crouch

ClearValue v. Pearl River Polymers (Fed. Cir. 2012) (Opinion by Judge Moore, joined by Judges PROST and SCHALL)

This case presents a classic law school hypothetical of an invention that is anticipated but likely not obvious. According to the appellate panel, the prior art fully discloses and enables the invention but also teaches that the proposed invention is impractical and does not work well. As discussed below, however, the anticipation holding itself is somewhat controversial because it is based upon the conclusion that a broad range disclosure found in the prior art ("less than 150 ppm") anticipates the narrower range found in the claims ("less than 50 ppm").

A jury found ClearValue’s patent valid and infringed and the district court denied the defendants motions to set the patent verdict aside. On appeal the Federal Circuit reversed based upon the appellate court's own factual finding that a single prior art reference teaches and enables each element of the asserted patent claim.

Background: The patent at issue is directed to a process for clarifying water using a flocculated suspension of aluminum along with high molecular weight quarternized polymers. The listed inventor, Richard Haase continues to be an owner of the patent and also CEO of ClearValue. Haase has filed more than 50 water purification and energy related patents and is also a graduate of the University of Missouri (ChemE + Mathematics + Economics). The defendant, Pearl River was once ClearValue’s customer but later began making its own version of the patented process.  ClearValue and Haase sued for patent infringement and for trade secret violation (for using the process without authority even before he filed for patent protection).

Anticipation versus Obviousness: The appeal focused on anticipation. Pearl River argued that all of the elements of CV's asserted claim were previously disclosed in U.S. Patent No. 4,800,039 (Hassick). The jury found otherwise. As a matter of procedure, a jury's verdict must be supported by "substantial evidence." If not, it must be set aside either by the district court or on appeal. At trial, the defendants had presented their case that Hassick taught each element of the claimed invention while the plaintiffs pointed only to "teaching away" found in patent. Unfortunately for the plaintiffs, "teaching away" is legally irrelevant to the question of anticipation. See Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Rather, under 35 U.S.C. § 102 a claim will be anticipated and therefore invalid if a single prior art reference describes "each and every claim limitation and enable[s] one of skill in the art to practice an embodiment of the claimed invention without undue experimentation." Quoting Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011).

Genus Species Anticipation: The only gap in the prior art disclosure was that Hassick generally disclosed "low-alkalinity systems (i.e., 150 ppm or less)" and "alkalinity of between 60-70 ppm" while the asserted patent claimed "alkalinity less than or equal to 50 ppm." In its 2006 Atofina decision, the Federal Circuit addressed a similar genus-species situation involving a narrow claimed temperature range and a broader temperature range found in the prior art. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006). In Atofina, the court held that a broad genus range disclosure in the prior art did not anticipate the narrow species range claimed. There, both the hypothetical “person having skill in the art”  (PHOSITA) and the patentee agreed that there was something special or “critical” about the claimed temperature range. The court distinguished this case from Atofina based upon its factual conclusion that “there is no allegation of criticality or any evidence demonstrating any difference across the range.”  Based upon the logical analysis that the narrow range is not critically different from the broad range, the Federal Circuit held that the claimed narrow range was fully disclosed by the broad range and therefore is unpatentable.

Comment – Whither Obviousness: Interesting notion: The mechanism that the court used to distinguish this case from Atofina are very much akin to obviousness principles — looking essentially for synergy or unexpected results that make the narrow range qualitatively different from the broad range.  It seems to me, however, that if these obviousness principles can be used to extend the anticipatory scope of prior art, then other obviousness principles (such as teaching away) should also be relevant.

Trade Secret Negated by Prior Art?: The Texas jury found Pearl River liable for trade secret misappropriations. However, the district court rejected that conclusion based upon an implicit admission by ClearValue that all of the elements of the alleged trade secret were publicly known at the time and found in the Hassick reference.  On appeal, the Federal Circuit affirmed without further analyzing the extent that public availability of knowledge in the form of a third-party prior art document is sufficient to disqualify the knowledge as a trade secret. I am not an expert on Texas trade secret law, but the at least the Restatement of Torts is clear that a trade secret “may be a device or process which is clearly anticipated in the prior art.”

 

 

150 thoughts on “Whither Obviousness: Narrow Range Anticipated by Broader Range in Disclosure

  1. Richard, all I can tell you is that I too have received what I believe to be "rough justice" from the Federal Circuit. At the time, a well-respected litigator expressed the opinion that the Federal Circuit was too committed to its agendas on patent law, arguing with each other, and insufficiently committed to deciding the cases before it on the grounds submitted, and in the fairest way possible.
     
     

  2. Ned:

    The briefs do not use alkalinity as the critical paramter; instead, the briefs literally state that molecular weight is the critical paramter.

    Also, there is no statement of teaching to use high molecular weight or an effective amount of high molecular weight DADMAC in Hassick. There is but a few exmaples thrown in; wherein, the results are poor and do not show synergy.

    Also still, we never stated that Hassick taught all of our claim limitations.

    Still also, how can the CAFC write Texas Trade Secret Law.

    Still also yet, there is no precedent to use a critical range to defeat anticipation. Critical range is used to defeat obviousness.

    I just simply do not understand this.

  3. Mark:

    Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me.

  4. Richard, I’ll reread the case, but if everything you say here is true, it looks like the patentee was given some rought justice. Perhaps they can persuade the Federal Circuit on a request for rehearing.

    But it also could be a failure of advocacy. It the appeals briefs focused the Federal Circuit on the wrong issue, the Federal Circuit should not be blamed.

  5. Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me. Someone, please help?

  6. Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me. Someone, please help?

  7. Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me. Someone, please help?

  8. Thank you SWIS but I’m not sure I go along with your view that the range 60-150 is not disclosed in a doc that claims 0-150 and includes Examples in the range 60-70.

    Great. Except that’s not my view.

    At the risk of offending the blog policeman BigGuy, try reading what I wrote.

    The part of the range that goes down to zero is not very interesting to those reading the doc

    Of course this depends on the context. Why are you bothering kicking up dust like you are?

  9. Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me. Someone, please help?

  10. Thank you SWIS but I’m not sure I go along with your view that the range 60-150 is not disclosed in a doc that claims 0-150 and includes Examples in the range 60-70. It would depend on context of course, but suppose the numerical ranges are in respect of diameters of dinner plates or the ball points of pens or the tread depth of automobile tyres. The part of the range that goes down to zero is not very interesting to those reading the doc. The EPO tests disclosures within ranges by asking whether a reader would “seriously contemplate” working in the part of the range decisive to the outcome of the case. It can recognise that a range bounded by the upper value in an originally filed claim and a lower value drawn from an Example is indeed an originally disclosed range. Are you saying that the EPO, when it does this, is “barbaric”?

  11. I don’t think that is the direction that Hal was leading to.

    I think Hal was reading that since the example was listed at 60-70ppm, that the phrase 0-150ppm must mean only 60-150ppm.

    Hal, that is a crabbed and artifical view of 0-150ppm. Such is not inherency. It is barbarism of the actual words used.

  12. Yeager, it can “go both ways”. It does “go both ways” (at the EPO). Indeed, at the EPO what counts as the “disclosure” of a document goes exactly the same way for at least three legal situations, namely:

    1. The doc is the app as filed. With your amendment of it, are you “adding matter”)?

    2. The doc is said to prejudice the novelty of a claim in view. Does it?

    3. The doc is your Paris Convention prio doc,. Is your claim entitled to that priority?

    Having the same rule, what is the “disclosure” of a doc, in all three situations, indeed brings legal certainty.

  13. Examiner’s often issue 102 rejections where they assert that the single reference, read as a whole, inherently has one or more elements of the rejected claim.

    So, why can’t this inherency arguement go both ways?

    It seems that one can argue that the reference in this case, read as a whole, inherently teaches a range of 60-150ppm. Specifically, that the statement of “less than 150ppm” must be read in light of the working example of 60-70ppm.

  14. MaxDrei:

    Actually, on that EPO annuity, it was paid on time; however, the German Bank held the funds for 4 days before putting in the EPO account.

    If we loose that patent, I hope that the German Bank is real solvent.

    Richard Haase

  15. The problem, it seems to me, is that “ClearValue concedes that Hassick teaches every limitation of claim 1.” This would include the “less than or equal to 50 ppm” limitation. There is no way otherwise that “150 ppm or less” describes “50 ppm or less.”

  16. That is of course true, and it is not at all what I said.

    Of course, MM is the king of the strawmen. We know what we get when we read his posts.

  17. MM: “You can’t patent an old composition simply because you found a new use for it.”

    That is of course true, and it is not at all what I said.

    I stand behind my earlier analysis. I’m currently enmeshed in Napier, Grasselli, Donohue I and II, Lilly, Bristol-Myers Squibb, etc., will let you know how it shakes out.


  18. Malcolm, if one were to prove based upon scientific testimony (taken from a professor, who of course swore to whole truth, “So help me God”) that jellyfish with that DNA existed prior to your date of invention

    Ned, you don’t understand. In some circumstances (the circumstance of my hypothetical, for example) there is simply no way of knowing when the DNA in the jellyfish first evolved that sequence.

    The chromosomes of all living organisms are evolving continuously. That is something that any professional biologist (outside of the Disclaimery Institute, anyway) will swear to without hesitation.

    This is a scientific fact and it’s also a problem for your legal argument, which appears to assume the opposite is true for all situations.

  19. “The question isn’t whether the property is inherent, but whether such inherency is evidenced in the disclosure of the prior art.”

    I lulzed, just fyi, evidence of inherency can come before or after the filing date. A fairly basic legal concept about inherency you should be aware of.

    If the evidence of inherency is in the new application, that is fine to show the inherency. Also, if the evidence of inherency comes by doing an experiment in court after all the patents have been issued that is also fine to show the inherency.

    But even setting that aside, if the “utility” (aka an intended use limitation if you put it in the claim?) is not necessarily achieved if you use any of the parts of the range of values then all you need do to overcome the reference is include the “utility” in the claim in whatever fashion you want to and then we’ll deal with it just like every other limitation that has ever been dealt with. Giving people a “break” on the values that have already been disclosed in the prior art is not the proper way forward.

    ” that prior art does not disclose use of the process over the subrange with respect to a different utility,”

    Which is only relevant once you put a limitation in about the “utility”. And we’ll deal with that limitation just like the other millions of limitations we deal with on a day to day basis.

    “Thus, a claim asserting a different utility than the prior art claim within a subrange, which utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.”

    That depends on specifically how you claim the “utility”. Do you make it an intended use limitation? Or do you perhaps simply make it a new method step? If the later, then why even bother putting in the limitation about the range, why not just leave the part about the range out and simply put the new method step in? Presto, your claim gets allowed just like millions of others without any bs about ranges even needing enter the convo.

    At the end of the day, that’s what you’ll find the whole discussion is about. People not wanting to put in limitations that blatantly will make the thing patentable in terms of a new step in the hopes of gaining a broader scope when all they should be getting is the same thing everyone else gets. Instead of simply limiting their claim with a step of “doing x” (the new utility) they want to claim the old process and simply limit it by a trivial limitation to the range of values within a range already disclosed so their coverage is (or at least might be) more broad.

  20. Interesting advice, Boundy, never to go near non-obviousness when drafting the specification, but is it helpful to inventors? Can your advice be reconciled with the latest USPTO definition of “technological invention” (all about solving a technical problem with technical means, lifted straight from the EPO). Can you reveal in your drafting what your technological invention is, if you never go anywhere near non-obviousness areas?

  21. ABSOLUTELY NOT. Never argue nonobviousness in the specification. NEVER.

    You can make all those arguments later. In re Chu, In re Robertson. That way you get to pinpoint exactly the points you need to make.

    If you do this premeptively, you have surrendedred any broader genus claim (In re Cortright) and any possibility of equivalents.

    This was a goofy outlier case that will not survive. Anticipation is not obviousness.

  22. To Have Been, or To Have Not Been has replied to your comment:

    "except by prohibitively expensive reverse engineering"
    non sequitur and nothing to do with the law.

    Existence in the prior art is a binary question, not a 'shades of grey' question.###DWT289###
     
    I agree, that is the holding of the Dunlop case authored by none other than Justice Stevens while still on the Seventh Circuit.

     

     

  23. Malcolm, if one were to prove based upon scientific testimony (taken from a professor, who of course swore to whole truth, "So help me God") that jellyfish with that DNA existed prior to your date of invention, that would be good proof, in my opinion, that the jellyfish was prior art.

    Regarding the form? Certainly if the form was different, it would not be a question of anticipation, but of obviousness.

  24. except by prohibitively expensive reverse engineering

    non sequitur and nothing to do with the law.

    Existence in the prior art is a binary question, not a ‘shades of grey’ question.

  25. MM, You miss the point. Possession and display may indicate that the so-called Genus was not a true Genus and your starting point is in error. When you realize that your starting point is in error, you should stop trying to apply a logic chain.

    GIGO.

  26. Can we agree on some basics, including:

    1. A novelty attack can be based only on matter which is disclosed by the reference (D1).

    2. And is effective only when D1 enables that disclosure.

    3. D1 need not be a PTO publication. And even when it is a PTO publication it need not have claims.

    4. If it is a PTO publication with claims, those claims are part of the disclosure.

    5. Mind you, a mere claim in D1 can never “disclose” everything that lies within its scope. Take for example “An intermittent windshield wiper”. How much of the fine design detail of present day windshield wiper designs does it “disclose”?

    6. That a claim in D1 has an ambit wide enough to embrace the subject matter of the claim under examination is not in itself sufficient to deprive that claim of novelty.

    7. And this is still the case even when D1 enables the full range it claims.

  27. I agree MM, you can make a worthless Strap and slap it on the already made product, but you can’t slap it on and claim it is a whole new Product.

  28. “A new utility can not render an anticipated composition patentable.”

    This is tautological, as anything that is anticipated is not patentable.

    Oh, good grief. Try this: a new utility can not render a composition patentable, where that composition was previously known and used.

    I haven’t thought about it enough to say this with any confidence, but it is my belief that this also applies to composition claims.

    I’ve thought about it a lot and have 100% confidence that, with respect to compositions, you are certainly wrong. You can’t patent an old composition simply because you found a new use for it. That’s what method claims are for.

  29. MM–

    “A new utility can not render an anticipated composition patentable.”

    This is tautological, as anything that is anticipated is not patentable.

    Concerning process claims in particular, it is my belief, as stated in my long post, that a claim asserting within a subrange a different utility than the prior art claim asserts for the entire range disclosed in the prior art, which subrange utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.

    I haven’t thought about it enough to say this with any confidence, but it is my belief that this also applies to composition claims.

  30. Amendment: in 4th last paragraph, capitalized “WITHIN THAT RANGE” should instead read “WITHIN THAT SUBRANGE”

  31. “”Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102″

    Except it does (look up enablement).

    Sorry.”

    +1

    Mark, it’s all about what is disclosed in the prior art; see my long post below.

  32. Mark–

    I believe that utility is most certainly involved with inherency in 102. Go back to Napier and Grasselli (for a discussion of inherency in 103).

    Napier is a case that was wrongly decided, about which I will write more tomorrow.

    Check out my post below.

  33. I’ve come to this discussion late, and see that an earlier post of mine didn’t make it…re-post:

    Ned–

    Take all this with a grain of salt, it is only my understanding…

    Consider first the patentability of a process claim.

    The prior art discloses a range, and discloses how to use that process to achieve a particular outcome, which outcome is achievable throughout the entire range disclosed.

    However, other outcomes may be achieved by using that process over some range other than the range specifically disclosed in the prior art claim.

    You use the term “subrange”, which I will take to mean a range completely within the range disclosed in the prior art. In order for a new claim to be anticipated by a prior art reference, that reference must disclose both how to make, and how to use, “the invention”. In this hypothetical example, the prior art teaches how to use the process over the entire range disclosed, and only how to use the process over the entire range disclosed, because the asserted utility can be achieved by using the process at any point within the disclosed range.

    Thus, a new claim asserting the same utility as the prior art claim within a subrange will be anticipated.

    Take now the case where there is another utility that is achieved by the use of the process over the entire disclosed range, that is necessarily achieved any time the process is used within that range–the achievement of that utility can be said to be inherent in the process, and does not need to be expressly disclosed in order to enable anticipation. The utility WILL NECESSARILY BE ACHIEVED if the process is used anywhere within the disclosed range, and is thus inherent in the prior art disclosure.

    Thus, a new claim asserting a different utility than the prior art claim within a subrange, but which utility is necessarily achieved by the prior art claim over its entire claimed range, will be anticipated.

    Take now the case where there is another utility that is achieved by the use of the process over only part of the disclosed range…that utility is NOT NECESSARILY ACHIEVED if the process is used anywhere within the disclosed range–hence it is “critical” to use the process WITHIN THAT RANGE” to achieve the particular utility. Since it is use of the process over the entire range that is disclosed with reference to a specific utility in the prior art, that prior art does not disclose use of the process over the subrange with respect to a different utility, either expressly or inherently.

    The question isn’t whether the property is inherent, but whether such inherency is evidenced in the disclosure of the prior art.

    Thus, a claim asserting a different utility than the prior art claim within a subrange, which utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.

    More later on articles, compositions, and the use of the principle of “inherency” in 103 analysis. As a primer, use of inherency in 103 was done first by an examiner, was endorsed by the BPAI, and accepted as legitimate by the CAFC; something found inherent in a process claim has been used to invalidate a composition claim; and Napier was wrongly decided.

  34. If you “create” a DNA molecule that is legally in the public domain

    You’re putting the cart before the horse. Who decides when a novel chemical composition that has never been described before and indisputably does NOT exist in nature in the form in which it is expressly claimed is “legally in the public domain”?

    Your dispute with me is that you do not agree that the specific jellyfish DNA is in the public domain where the jellyfish itself is in the public domain.

    Why do you assume that the jellyfish was “in the public domain”, Ned? For all anyone knows, the jellyfish could have evolved after I filed my patent application. It could have been created by some magical invisible being with awesome powers who decided to mess with me after my application was published. Sounds crazy, but it’s perfectly consistent with what roughly 30% of Americans believe about our universe.

  35. Beliefs?

    Look, I somewhat disagree with 7th circuit opinion.  However, it embraces very old Supreme Court case law.

    If you "create" a DNA molecule that is legally in the public domain, it makes no difference that others did not know of it.  I personally disagree with this, as I think the essence of prior art is public knowledge.  There are Supreme Court cases that have even held that once knowledge of an invention is lost, it can be "reinvented."

    There are also Supreme Court cases that authorized patents on a process and the chemical it produced where the chemical is produced by known prior art processes, but nobody recognized that it was produced.  Tilgman v. Proctor. This would also suggest that the golf ball case might be wrong.

    Regardless, one cannot patent things that are in the public domain regardless that one does not know of them.  If a non informing public use places the claimed DNA into the public domain, the DNA cannot be patented.

    Your dispute with me is that you do not agree that the specific jellyfish DNA is in the public domain where the jellyfish itself is in the public domain.  

    As to policy, I disagree with it, to a degree.  

  36. Moving the goalpost, citing shxtty 7th circuit cases from 1975 that have absolutely nothing to do with the synthesis of novel chemicals, and floating bizarre interpretations of legislation will not help you.

    Read what you wrote:

    identically disclosed in the prior art jellyfish

    Get off the drugs, Ned. Assume the facts in my hypo, not yours, and answer my questions. Do you have a policy-based reason for your beliefs? Because your legal reasons sxck the [deleted] out of my dead [deleted]‘s tightly puckered [deleted].

  37. MM, assuming the Aussie jellyfish is prior art (e.g., after September when Aussie jellyfish become prior art) your 999 necleotide is anticipated if identically disclosed in the prior art jellyfish per Dunlop. It makes no difference that you thought you were the first. You were not the first to make the sequence.

    If there is a difference in sequence, the question becomes obviousness.

    Now, if I am wrong that a non informing public use is not prior art, please explain. I think the issue is important outside of chemistry.

  38. Ned But I take it that you do not have any problem with the general principle that if a chemical composition is known, then one cannot reclaim the chemical composition just because one discovers a new use for it.

    Agreed. But the chemical composition (my 999 nucleotide gene) was not known until I synthesized it and showed its utility to the world. Please address the facts in the hypo, Ned, and answer the questions I asked you. Thanks.

  39. Well, Malcolm, until September, perhaps you could argue that that jellyfish located in the sea off Australia was not a prior art jellyfish, it being in public use outside the United States.

    But I take it that you do not have any problem with the general principle that if a chemical composition is known, then one cannot reclaim the chemical composition just because one discovers a new use for it.  Furthermore, I would think that your agreement will extend to known variations the prior art, such isolated versions.

    The only real dispute we have is whether a particular strand of DNA, found in a human, is in the prior art.  (I suggest to you that the exclusion from patentability of things of nature is based upon fundamental principle that things of nature are in the prior art.)

    However consider this: We know that a trade secret is not prior art.  However it is also said that if a physical embodiment of the prior art, such as a golf ball made from a material that is unknown, and otherwise unknowable except by prohibitively expensive reverse engineering, is available to the public, the material of the golf ball is in the public domain and is prior art, not from the date the nature material is discovered or reverse engineered, but from the date that the golf ball first entered the public domain.  (I have significant difficulties with the golf ball case, but nevertheless it is respected precedent.)

    So if a sequence of DNA exists in nature and can be reverse engineered from nature, it would seem that the golf ball case would suggest that the DNA is in the prior art.  It is old, even though it has yet to be reverse engineered.

  40. I also believe the existence of DNA in the prior art inherently discloses/makes obvious isolated versions of that DNA.

    So let’s say I synthesize a novel 999 nucleotide DNA sequence that encodes a novel 333 amino acid enzyme that just happens to be extremely useful for treating leukemia. Three years after I file my patent application somebody discovers that a jellyfish off the coast of Antarctica contains the same nucleotide sequence (part of a larger jellyfish gene encoding a protein of unknown function expressed in the jellyfish’s tentacles). You’re saying you believe my gene is obvious? Why? What if my gene differs by one nucleotide from the jellyfish sequence. Still obvious?

    Maybe you have a policy-based reason for your “beliefs” on this subject, Ned. If so, please share them. Also, I have no idea what your beliefs on this subject have to do with the subject of this thread but whatever.

  41. IANAE, regarding 80, 90 and the claimed 85, this is a close question as to 102/103.  However, on further consideration, I agree that the issue is obviousness.

  42. sockie Trick question, as the Crticialness may evoke a genus/species error and show that anticipation was in fact not reached (enabled) by the prior reference, even though a wider range was divulged.

    That’s actually a “trick answer” to IANAE’s rhetorical question. A new utility can not render an anticipated composition patentable. You can get a new method claim, though.

    Man, this blog has the dumbest trolls.

  43. sockie: Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.

    Let me spell it out for you, sockie: A species (by definition, a member of a genus) anticipates a claim to the genus because if the genus claim were granted, the species would necessarily infringe the genus claim. The fact that the genus may be “overbroad” or “non-enabled” is utterly irrelevant to this (correct and boring) analysis.

  44. Mark, thanks. I read the MPEP. link to uspto.gov

    It seems:

    If the prior art has examples in the claimed range, it anticipates. We agree on this.

    If the prior art has examples above and below the claimed range with sufficient disclosure to suggest that the claimed range, bracketed by the examples, is disclosed, it anticipates. (Sufficient specificity.)

    If the prior art has examples outside the claimed range, but in a pattern that suggests the claimed range is withing the enabled disclosure, the claimed range is not anticipated, but nevertheless, obviousness.

    I think here, in this case, we had prior art examples near the upper limit claimed plus an enabling disclosure that the embodiments in the claimed range would work. This seems enough to render the claim obvious, but not anticipated.

    I stand corrected.

  45. Assume in this example that the prior art discloses examples of 80, 90, and 100, and you claim 85. You disclose no different utility than the prior art. I suggest to you that your claim is anticipated.

    That’s clearly ridiculous. A claim to 85 cannot be anticipated unless the prior art teaches 85. If the prior art teaches 80 and 90, then 85 is (probably) obvious.

    The bucket’s handle add’s a new utility.

    Yes, but the bucket still has the utility taught by the prior art. And the claim is to the structure, not the use. The structure is either taught and enabled, or not. Adding utility doesn’t change whether the structure is found in the prior art.

    The racemate of both L-and R- inherently discloses the the L- and R-enantiomers.

    I would tend to agree, assuming the stereochemistry of the molecule is known. The court appears not to agree.

  46. Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102

    Except it does (look up enablement).

    Sorry.

  47. How can a new utility save a claim to a compound that is anticipated?

    Trick question, as the Crticialness may evoke a genus/species error and show that anticipation was in fact not reached (enabled) by the prior reference, even though a wider range was divulged.

    This is sort of like science fiction. If I write a scince fiction novel covering a range of materials from nothing to everything, but do not enable that entire range, a later actual invention within my larger range will not be anticipated by the (bogus for that purpose) previously shared larger range.

  48. Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.

    One cannot assume that the proffered genus is always correct. If the genus is not correct, any sense of species infringing the genus is shot.

  49. Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.

    One cannot assume that the proffered genus is always correct. If the genus is not correct, any sense of “inherency” is shot.

  50. the genus inherently discloses every species for the disclosed utility.

    I can see that being arguable when a well-defined discrete genus is described in a specification. If it says that all thiols have a particular utility, then by all means reject a claim to a particular thiol for that utility as anticipated. The disclosure of the genus is tantamount to a list of all its member species. However, if only one or two are disclosed and the entire genus is claimed, I don’t think it’s as clear-cut that all species are inherently disclosed.

    Also, here we’re dealing with a continuous genus, which describes not an identifiable set of compounds but a range of concentrations, and the range clearly reaches way beyond what is demonstrated to have utility. The narrower range claimed in the later patent has never been practiced before, and no teaching within that range can be found in the prior art. What if the prior art had said “regardless of alkalinity”? Would that anticipate any conceivable alkalinity range in a later patent?

    unless the claim also claims a new utility.

    How can a new utility save a claim to a compound that is anticipated? Once you accept that as a rule, you might as well disclose a new utility and copy the claims of a prior art patent. Are you starting to see why this has to be an obviousness issue?

  51. I would urge anyone discussing the issues at play here to make clear at least whether they are discussing composition or method claims, as I did in my 2:06 comment upthread.

    As for this:

    Ned Heller said in reply to Mark…
    Mark, can you explain why a species anticipates a genus?

    IANAE said in reply to Ned Heller…
    I would think a species anticipates a genus claim because a species infringes a genus claim.

    IANAE has provided the correct answer.

  52. IANAE, regarding the prior art, it also has to enable.  Thus the question is whether the broad disclosure of a genus enables the species not among the examples.  I think this is what you meant by "valid."  Whether the patent is claiming the same invention might be relevant to an interference or derivation proceeding.

    Thus, regardless of the "claim" in the prior art, when the prior art discloses specific examples, the question then becomes whether the prior art inherently discloses the claimed range or subrange.

    Assume in this example that the prior art discloses examples of 80, 90, and 100, and you claim 85.  You disclose no different utility than the prior art.  I suggest to you that your claim is anticipated.

    The bucket's handle add's a new utility.

    The racemate of both L-and R- inherently discloses the the L- and R-enantiomers.  (I am not a chemist, so bear with me here if I get the lingo wrong).  A patent could be hand on the isolation process.

    I also believe the existence of DNA in the prior art inherently discloses/makes obvious isolated versions of that DNA.

  53. Ned- “utility” has absolutely nothing to do with this. Bottom line-this was a 103 issue, definitely not 102. This is based on case law dating back probably 40-50 years (at least). See the MPEP for further details.

  54. Read IBP’s posts above. I think he has it right. As you noted, the genus inherently discloses every species for the disclosed utility. A claim to subrange that does not also require a new kind of utility would necessarily make practice of the prior art an infringement.

    Thus the law should be, and I think is, that if there is any overlapping ranges at all, the claim is anticipated unless the claim also claims a new utility.

  55. One simply cannot and should not make the practice of the prior art an infringement.

    It depends on what you mean by “the practice of the prior art”. When the prior art expressly teaches only 80, 90, 100 and 150, and claims “less than 150″, are you practicing the prior art at 50? Does that depend on whether the claim to “less than 150″ is valid?

    What if the prior art discloses and claims a bucket generally, and you have a claim to a bucket with a handle? Is a bucket with a handle practicing the prior art?

    What if the prior art is a racemate of a known molecule, and you claim the L enantiomer?

    There’s no law against the same article or method simultaneously infringing the claims of two valid patents.

  56. IANAE, IBP pointed the way.  The patentability of a subrange depends on whether claim also requires a new use (utility).  Thus if someone is practicing the prior art "use" and not the new use, albeit that he is within the subrange, he is not an infringer.  

    One simply cannot and should not make the practice of the prior art an infringement.

    Malcolm, I think you said this once yourself.

  57. “If it were limited to a specific use different from the prior art, then we get to inherency/obviousness.”

    Correct. We should consider any intended use limitations in this case just like every other intended use limitation that there ever has been has been considered.

  58. The person practicing the prior art can be made an infringer of the patent on the narrower range.

    So what? That’s the case for all selection patents (regardless of unexpected results or other secondary considerations), all overlapping range patents, all patents claiming a range of a known property for which no range was previously disclosed, and all improvement patents of any kind. Doesn’t make them invalid.

    Unless the person practicing the prior art is automatically or inherently an infringer, it’s not an anticipation.

  59. Ned, I believe that a species anticipates a genus because a genus is generally understood to recite each species in the alternative. Therefore, the express disclosure of one species that falls within the genus anticipates.

  60. I would think a species anticipates a genus claim because a species infringes a genus claim.

    A broad range doesn’t anticipate a narrow range, assuming no embodiment within the narrow range is not explicitly taught, because an embodiment within the broad range is not inherently within the narrow range. I would think it should always be an obviousness issue when a claimed range overlaps with, but does not fully encompass, a prior art range.

  61. I think this case was plainly wrongly decided. In prosecution, the burden is on the PTO to show invalidity under 102. That is, the examiner has the burden of showing that each and every element of the claim is disclosed by the reference. This decision holds that when a genus is disclosed, the burden is on applicants to show that there is something different or “critical” about a claim to a subgenus. This means that every genus disclosure anticipates everything that falls within it, absent a showing of criticality. Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102. Under this decision, Applicants would have to produce rebuttal evidence of “criticality” or “unexpected results” to respond to anticipation rejections. This is important in prosecution because it would shift the burden of proof in a 102 rejection from the examiner to applicants. Citing this decision, an examiner could assert that a broad genus disclosure anticipates everything that falls within it, absent proof of “unexpected results” or “criticality” to the contrary.

  62. 6, IBP did bring up a point we must consider.  If the specific use/application of the subrange is different from the use of the broader range….  I suppose if the claim were not in some way limited to that use, then there would be anticipation.  If it were limited to a specific use different from the prior art, then we get to inherency/obviousness.

  63. “6, because of its use of sweeping language far beyond the facts of the case, you think that Rader may have been behind Lourie’s poorly written opinion? I would tend to agree, given everything I’ve ever seen from Rader.”

    Not really that, I could just hear it in the words, if you’ve ever heard/read Rader and Lourie talk/write it was as if you were hearing Rader talk/write there, not Lourie.

    But in so far as you bring that up, yes, very much the overbreadth as well. You see Rader doing that all the time. He <3′s his bright line rules that cover whole swaths of subject matter and he <3′s making them. Lourie is not quite so taken with doing that either.

    “Now this is simply brilliant, I must congratulate you 6, as I fully agree,”

    I certainly appreciate it, and it’s funny because every attorney whom I discuss that specific principle with over the phone agrees as well, although they’re fully aware of Atofina and <3 citing it for their client. They’re well aware that a reasonable fact finder could find every last data point in a given range and unless it is a huge range with absurdly not enabled values within it they know it should be anticipatory if not for court meddling.

  64. I think we arrived at the same point by different paths, as I agree with the decision, but this still allows a 102 issue to be present (and does not dissolve to a 103 issue).

    As Dennis notes: “On appeal the Federal Circuit reversed based upon the appellate court’s own factual finding that a single prior art reference teaches and enables each element of the asserted patent claim.” Clearly if a subrange (or any of the three pedantic verisons) contain a subrange that is not so enabled (be it for criticality or specialness), then 102 could fail.

    That’s the point of my post. The other legal ramifications you throw in are not incorrect, per se, but they do not address the point of my post. I used the term “muddy” more to indicate that we were talking past each other.

  65. IBP, I see your point about utility. I think this is not the same thing as criticality, or is it? If a claimed subrange has the same utility as the prior art, but does it better, is not that patentable as well?

    But if the new subrange is used for something different than what the prior art discloses, I agree, there can be no anticipation.

  66. Thank you for letting me in on your source of legal knowledge for where anticipation and “enablement” interesect. What I see is a 11-20-06 web posting on The Patent Prospector about the case of Impax Laboratories v. Aventis Pharmaceuticals. Interestingly, the resolution in Impax has nothing to do with claimed ranges but, instead, involved whether the prior art reference anticipated the claimed drug tablet in “enabling creation of the drug for treatment.” In other words, and as I noted in earlier post, “enablement” under 35 USC 102 relates to whether the anticipatory reference sufficiently describes how to make (and in some cases use) the claimed subject matter “without undue experimentation.” That’s all that the Impax case and the cases cited by Impax stand for.

    With regard to claimed ranges, I suggest you consider the cases cited in MPEP 2131.03 (Anticipation of Ranges) which refers to and discusses Atofina, as well as Titanium Metals v. Banner cited in ClearValue, in conjunction with MPEP 2144.05 (Obviousness of Ranges) and in particular the cases of In re Peterson and In re Harris. As the Peterson and Harris cases show that the issue of claimed ranges (usually multiple claimed ranges) most often comes up in the context of metallurgy. The Peterson and Harris cases are also instructive in that multiple claimed ranges that “overlapped” with the prior art reference went down based on prima facie obviousness, not anticipation.

    What I’m driving at here is that Atofina is really a situation of mulitple “overlapped” claimed ranges. (And in that regard my reference to the gas molar ratios in no way “muddies the water.”) Accordingly Lourie was correct in Atofina in distinguishing Titanium Metals, which instead involved a prior art reference that specifically taught (“bullseyed”) levels of two different metals squarely within the two claimed ranges, and thus was anticipatory. But where Lourie muddies the opinion in Atofina (and shockingly so in my opinion) is in not even citing either the Harris or Peterson cases which are far more relevant to the factual situation in Atofina than is Titanium Metals.

    By comparison, ClearValue involves only one “overlapped” range. In fact, calling the claimed alkalinity of “less than or equal to 50 ppm” a range is somewhat of a misnomer; it is, instead, “maximum” level as it reads on an alkalinity of 0 ppm, as does the art disclosed alkalinity level. In a situation involving “overlapped” maximal levels, the correctness of Moore’s anticipation ruling under 35 USC 102 is even more clearly correct to me (but not for the reasons she relies upon) as both the claimed and disclosed alkalinity range include a common end point, namely 0 ppm. Again, Moore’s opinion in Atofina is burdened by the sloppiness of Lourie’s opinion in Atofina.

    But thanks for your comments, LE, as they’ve allowed me to reflect even further on why Moore’s ruling in ClearValue is correct, even if the reasoning provided isn’t the way to get to that ruling.

  67. 6, because of its use of sweeping language far beyond the facts of the case, you think that Rader may have been behind Lourie's poorly written opinion? I would tend to agree, given everything I've ever seen from Rader.

    Further, the attempt by Judge Moore to clarify the facts in Atofina and to demonstrate the real basis for its holding has to be applauded.

    Now this is simply brilliant, I must congratulate you 6, as I fully agree,

    "In short, the prior art should be read from the perspective of one of ordinary skill, who sees in the reference in Atofina some 400 embodiments at each degree between 100 and 500 degrees. And every last one of them is anticipatory to later coming ranges or values within that range. That said, if they want to argue about results etc. then they may, but that better be in the claim."

  68. “Lourie wrote Atofina”

    Yeah I’m aware, but you can practically hear Rader speaking in the important parts. Lourie isn’t taken to such flights of fancy. One can only take it that Rader persuaded Lourie of that position and he regurgitated it, perhaps even regurgitating it in a way that left out some key parts that are being highlighted in the instant case.

    “Criticality was not mentioned in the opinion.”

    Read the instant decision, they talk about it. And of course it wasn’t mentioned in the original, that’s my point, they should have mentioned it in the original. We’re just now finding out, years after the ruling came down, about the specifics of the case. Although if you have Pacer you might could find all the dox, and have had them years ago, I don’t have that luxury because our judiciary is nearly worthless when it comes to getting legal dox out to the public.

    ” It does seem that Atofina holds that the disclosure of a broad range does not anticipate a claimed narrower range without more. ”

    Exactly my point. But the good fellows on the court know exactly (they lived the decision remember?) circumstances and can recall every last detail about them quite easily with their roflstompawesome court tools.

    My view is that Atofina should have gone the opposite way absent good evidence that the prior art did not enable the sub-range. And by good evidence I mean someone reliable carried out the process and reported back, not some tard providing testimony about what he thinks. And, furthermore, if they wanted to talk about the “result” not being achieved at 100 degrees instead of 300 then they better dam well have a limitation in there about that result or else they have no nexus, their sub-range being ineffective.

    In short, the prior art should be read from the perspective of one of ordinary skill, who sees in the reference in Atofina some 400 embodiments at each degree between 100 and 500 degrees. And every last one of them is anticipatory to later coming ranges or values within that range. That said, if they want to argue about results etc. then they may, but that better be in the claim.

  69. 6, Lourie wrote Atofina.  Rader was on the panel.

    Criticality was not mentioned in the opinion.  It does seem that Atofina holds that the disclosure of a broad range does not anticipate a claimed narrower range without more.  

    I will think on this a bit more, but criticality is the key.  Perhaps this can only be considered under 103?

    What are your views?

  70. IBP MM, your inherency discussion is interesting as a logical matter, but it does not appear to be required as a practical matter, as the inquiry is directed to whether the prior art reference “teaches how to use” the claimed invention. Yes, the structural limitations may all be present in the prior art reference, and will have inherent properties–that much is not in doubt… There appears to be an awareness requirement in all of this, such that in order for the reference to enable anticipation, the PHOSITA must be aware that the utility of the claimed invention will be achieved by carrying out the use taught in the prior art reference.

    I believe this is correct for process claims. My earlier 2:06 comment was directed at composition claims. I see now that the claims at issue in ClearValue were process claims.

  71. Why am I apologizing to anon? Because I mistakenly ascribed your posting to him.

    I find it educational to write that I don’t understand: it so often elicits revealing answers.

    I told you about the complementary roles of novelty and obviousness under the EPC. I will ask readers my rhetorical question once again: if the US legislator allows all earlier-filed but later-published PTO docs to be cited for obviousness, then whatever (except for the filter role I gave you above) is 35 USC 102 in there for? If something is obvious, it’s not patentable. The set of things that are obvious includes the smaller set of stuff that’s old, right? So why bother with also examining oldness? Find out what’s obvious and you’re done, aren’t you?

  72. Eg,

    Did you google like I suggested?

    A two second google leads to these sources:
    link to heinonline.org
    link to patenthawk.com
    link to patentbaristas.com

    These can start you down the road in discussing why enablement and 102 intersect with the subrange with critical properties. Bottom line, if the critical difference is not enableed, the 102 question still fails, even if the subrange is within the larger range (or any of the three semantice versions).

    There are plenty more.

  73. This case appears relatively simple.

    In order for an invention to be described in a prior art reference with sufficient specificity to support an anticipation defense–i.e. with sufficient specificity to “enable anticipation”–the prior art reference must specifically teach one of ordinary skill in the art how to use the newly-claimed invention.

    In Atofina, it didn’t…therefore, no anticipation.

    Here, it did…therefore, anticipation:

    “…the example in Hassick at 60-70 ppm supports the fact that the disclosure of 150 ppm or less does teach one of ordinary skill in the art how to make and use the process at 50 ppm.”

    All “criticality” refers to is “necessary to achieve a particular utility”; the inquiry then becomes whether that utility was specifically taught in the relevant prior art reference.

    On the surface, this is easy stuff…is there something I’m missing?

    MM, your inherency discussion is interesting as a logical matter, but it does not appear to be required as a practical matter, as the inquiry is directed to whether the prior art reference “teaches how to use” the claimed invention. Yes, the structural limitations may all be present in the prior art reference, and will have inherent properties–that much is not in doubt.

    The question, however, is not whether those properties exist, but whether the application of those properties in the specific situation contemplated by the patent or application at issue, has been specifically described in the prior art reference sufficiently well to enable a PHOSITA to achieve the utility described in the patent or application at issue.

    There appears to be an awareness requirement in all of this, such that in order for the reference to enable anticipation, the PHOSITA must be aware that the utility of the claimed invention will be achieved by carrying out the use taught in the prior art reference.

  74. IBP,

    Because the broad disclosed range lacks sufficient specificity to anticipate the narrower range. That doesn’t mean you don’t have a significant (prima facie) obviousness issue (you do). But with obviousness, you at least a have chance to rebut it with evidentiary showsings; with anticipation you don’t get that chance, as Judge Moore correctly notes with regard to “teaching away” evidence.

  75. OK, LE, if I “do not even recognize why the enable point is on the table,” then please provide case law (cites are fine) to support your view, and particularly in the context of claimed ranges. So far, my research on “enabled” anticipation, claimed ranges, etc., doesn’t turn up the “law” you suggest is on point.

    I also suggest you stop acting like a Professor Kingsfield and hide your legal “pea” by telling me I have “more research to do.” I’m not a law student like in The Paper Chase. Provide me with your case law in support, and you might be surprised that I might be convinced otherwise.

  76. Sorry EG, you are quite incorrect on this issue. Mere “overlap” (or any of the three semantic versions) is not enouch to dismiss a 102 challenge, and the “enabling” point is the key (in its relation to the critical or specialness of the subrange).

    If you do not even recognize why the enable point is on the table, you have more research to do than I am willing to give you on this blog.

    And yes, you are muddying the waters because you are kicking up more dirt in the water than is necessary to understand the issue.

    Google the issue, spend some time with it.

  77. MaxDrei,

    Why are you apologizing to Anon when you compliment him?

    Shill, I do not understand you.

    Wow. Really? You don’t understand something as plain as day?

    Stop the presses.

    Then again, when has your non-understanding ever stoppd you before? You seem to relish this role of “not understanding.” You do it so well.

    Other posts of your on this thread also evidence that you don’t understand what the rule of law of obviousness and the rule of law for anticipation are. You think anticipation redundant. It’s a good thing the world does not operate on your understanding. No matter how kluged things seem now, I can at least hold that thought to cheer me up.

  78. “Suppose the evidence is that no skilled reader of D1 would seriously contemplate values as low as 10 when putting into effect the teaching of D1. ”

    If that “evidence” is something other than expertlol or inventorlol testimony then sure thing Max.

  79. This is an interesting case and it appears that the correct result (invalidation) was achieved (and the same result would be reached whether 102 or 103 was used).

    What’s most interesting to me is that this decision seems to represent the logical extension of one of last year’s worst Federal Circuit decisions: Genetics Institute v. Novartis.

    link to patentlyo.com

    You’ll recall that in Genetics Institute the CAFC held that post-filing data — even data obtained by third parties — could be used to show that a claimed composition possessed “unexpected properties” and was therefore non-obvious in view of the prior art as of the filing date, even where those unexpected properties were completely unknown to the applicant at the time of filing. The majority’s holding rested entirely and precariously on one misapplied (but trivially accurate) assertion: that a composition and its properties are inseparable.

    In this case, it would appear that the other shoe has dropped. If I disclose a genus of “novel compositions [X] with [structural/physical feature Y] less than #”, and it takes only ordinary skill to make any of the compositions, then any species composition falling within the range should be considered inherently anticipated for the same reason (“a composition and its properties are inseparable”). For the purposes of obtaining patent protection to a species composition, the applicant should not be able to rely on the “discovery” of a new property of one of those compositions (or worse — rely on the post-filing data of third parties) to obtain a patent.

  80. “We have a conflict in evidence, indeed.”

    No, we don’t. We have one side that is lying/conflating issues in order to obtain a patentlol/enforce a patentlol on their subrange. I’ll give you one guess as to which side that is.

    “I suspect that if the inventor finds that the broader range does not work as advertised,”

    If that had been the case then yes. But in Atofina they did not find such a thing. All they found was an omfg nice/unexpected result at 300 over that promised in the reference.

    “At this point, I would want, if I were a judge, a test made to see if there was in fact a hole in performance at 300 and some greater performance at the claimed lower limit of 330.”

    Of course you would, but the English majors we have serving on our bench never seem to take that completely reasonable approach.

  81. “The Atofina facts, as described here, said that the process would not work as claimed at 300 degrees (claimed range 330-450). But 300 was within the claimed range of the prior art (100-500).”

    You’ve got that a bit twisted Ned, what the “facts” said was that you wouldn’t get the same “result” and that it wouldn’t “work” in their “special way”, not to even mention that in that case nobody presented any real “evidence” they just presented a bunch of bs on a platter and Rader ate it right up. It may very well have not worked at 100 degrees, but “dialing it in” by controlling the temp to one of 400 different data points so as to get it to work is well within the skill of the ordinary imaginary artisan. And that is important because, as noted as an aside in this case the question in that case was really whether or not the sub-range was enabled in the prior art. And it sure as f was.

    TO be sure, I applaud someone finding a sub-range of optimum values that results in some omfg awesome result compared to some other values in a given range, and I have 0 doubt that Rader feels the same and that is why he cooked up this ridiculous nonsense in the first place. That said, it should not be asking too much for an additional limitation directed towards the “result” that they were achieving rather than just giving them a range of values as was done. And I say that even while I frown on “result” limitations, they are better than this alternative policy driven lawl Rader made up out of whole cloth.

    But in any event, it is a decent compromise I suppose. It isn’t exactly like the world is ending because of it.

  82. Sorry about that, anon.

    Shill, I do not understand you. You were the one here who first characterized Art 54(3) EPC as a “problem”. In what way am I changing the subject?

    You do raise one interesting point though. You mention:

    “multiple inventions to different inventors on obvious things”

    as if it something self-evidently bad. Not self-evident to me though. It can only happen in the 18 month black hole between filing and A publication. I think it is a positive feature, for it tempers the otherwise excessively unforgiving “all or nothing” aspect of the FtF race to the PTO.

  83. Unfortunately, LE, that distinction is the hair that must be split. From an anticipation standpoint, there is no “difference” between the claimed alkalinity of “less than or equal to 50 ppm” and the art disclosed alkalinity of “150 ppm or less”; the ranges “overlap” and thus the claimed range is anticipated. Whether you like it or not, anticipation does not depend on “criticality” (obviousness might) but on whether or not there is a DIFFERENCE (small or large) between what is disclosed and what is claimed.

    As far as being an “enabling” disclosure, what more is needed than the reference says that the alkalinity can be 150 ppm “or less”? That reads on an alkalinity of 0 ppm, as does the claimed alkalinity of “less than or equal to 50 ppm”; how is 0 ppm alkalinity not enabled? One of the few times I’ve seen an “enabling” disclosure be relevant to anticipation is in terms of whether a method for making/synthesizing the claimed compound is also taught by the alleged anticipatory reference.

    I’m also not “mudding the waters” by referencing the two different process parameters (temperature and oxygent to methylene chloride ratio) in Atofina that Lourie, in my opinion, incorrectly said weren’t each anticipated by the asserted anticipatory reference.

  84. EG: “criticality” is important where you have a “sub-range” (or what I refer to as an “encompassed” range) because we’re now talking obviousness under 35 USC 103, not anticipation under 35 USC 102.”

    Sorry if I’m missing something, but precisely WHY would one be “talking obviousness, not anticipation” in such a situation?

    EG: “I would refer to a claimed range of 3 to 6% as being “encompassed” by the broader 1 to 10% range. An allegation of “criticality” would be important for such an “encompassed” range, but not because the “encompassed” range is anticipated, which it’s not, but because of obviousness under 35 USC 103.”

    Why is the so-called “encompassed” range not anticipated in this situation?

  85. Of course how everything looks depends on where you’re looking from, anon.

    Like the rest of the Shillers, MaxDrei is now bitten by the Sockie-troll accustion bug.

    I am not Anon.

    But nice of you to try to change the subject from your wonderful system that let’s out multiple inventions to different inventors on obvious things. How wonderful that your comments on Ob Via can be roadkill on these boards. But do continue to post how wonderful the EP is on everything. There is a shortage of syrup of ipecac that your posts supplement nicely.

  86. Some years ago, a UK patent attorney published a paper explaining how you can re-patent the prior art. Selection patent A covers 0-33% and is based on advantage X. Selection patent B covers 33-66% and is based on advantage Y. Selection patent C covers 66-100% and is based on advantage Z. Your three selection patents will do just fine.

  87. Of course how everything looks depends on where you’re looking from, anon. The way I see it is that nobody outside the US jurisdiction sees any problem, and all are perplexed as to what is the mote in your eye. I do so heartily agree with you, that there are none so blind.

  88. Well yes, I do see that if there is no anticipation, and you move to 103, you can look at evidence of teaching away.

    But for me that is not a satisfying reason why the statute has to have 102 in it? Did the legislator think, like, obviousness is so hard, we had better install simpler filters first (like 101 and 102) so scarce resources of time (for examining obviousness) are conserved for when they are really needed, with 101 and 102 taking on the task of filtering out all the easy stuff before we get to impossibly subjective 103?

    Is that the only justification for the presence of 102 in the Statute. If there is another reason, what is it?

  89. EG,

    Your make a distinction without a difference in trying to split the hair between “overlap” and “encompass.”

    You further muddy the water unnecessarily by introducing oxygen and methylen chloride.

    A subrange is of course a subset of the larger range. That is clearly understood. No need to dwell further on that.

    The point being made (for subrange, range overlapped by another, or range encompassed by another – the smaller range in each) is that if that smaller range has criticality or difference, then there still is a 102 issue if that difference was not enabled by the prior art reference. It doesn’t matter what you call it, and it is not fully dependent on Lourie’s view in Atofina.

    Your dismissal stands flawed.

  90. Two “inventions” obvious on their face over one another, and you cannot see the problem?

    Something to do with a terminal disclaimer?

  91. So what? I don’t understand your philosophical objection. Sorry but what’s wrong with the EPC logic?

    Two “inventions” obvious on their face over one another, and you cannot see the problem?

    There are none so blind as those that will not see.

    Another dead horse at the well of MaxDrei.

  92. “Who cares whether the case goes down under 102 or under 103? Given 103, what is the legal task still not done, which requires 102 to be present in the Statute?”

    Judge Moore certainly cared, and for one very important reason: because if there’s no anticipation under 102, you may now bring in “other” evidence (such as the “teaching away” testimony of the patentee’s expert at trial) under 103 to show lack of obviousness. It would have been much tougher for Moore to argue the jury verdict lacked “substantial evidence” under 103, but much easier under 102 where such “teaching away” evidence is no longer relevant.

  93. “In other words, in my hypo, is D1 still prejudicial to novelty in the USA?”

    It isn’t “novelty” question anymore in the US, Max, and in fact, you’ve got a very good argument for unobviousness under 35 USC 103 in the US. With the 5-10 range, you now have a “sub-range” or “encompassed” range, and not an “overlapped” range as is true in Clear Value. See my responses to LE and Ned.

  94. Max, interesting take.  The references discloses that 300 works, but the application discloses that 300 does not.  We have a conflict in evidence, indeed.
     
    I suspect that if the inventor finds that the broader range does not work as advertised, then that is a discovery in itself, not so?
     
    At this point, I would want, if I were a judge, a test made to see if there was in fact a hole in performance at 300 and some greater performance at the claimed lower limit of 330.
     
    If I were an examiner, I should want the same evidence.  Otherwise, the claims should be declared anticipated.
     

     

  95. See my response to LE above, Ned. As I note, “criticality” is important where you have a “sub-range” (or what I refer to as an “encompassed” range) because we’re now talking obviousness under 35 USC 103, not anticipation under 35 USC 102. So a range of say 250 to 350 that shows “criticality” relative to the broader “encompassing” range of 100 to 500 would be highly relevant.

    But as I also point out to LE above, the claimed range in ClearValue isn’t a “sub-range” or an “encompassed” range. Instead, it’s an “overlapped” range which is anticipated under 35 USC 102.

    As I also pointed out above to LE, Lourie ruled in Atofina that two different claimed ranges which were “overlapped” by the art disclosed ranges weren’t separately anticipated; that’s simply not correct. In fact, as Lourie also pointed out in Atofina, there was a third process range which wasn’t taught at all by the art reference; that, alone, would have meant no anticipation.

    One way you might justify Lourie’s view in Atofina is that these two “overlapped” ranges aren’t anticipated if you consider them together, i.e., the two ranges when considered separately are “overlapped,” but not when considered in combination. In other words, and using the facts from the Atofina case,, where the temperature ranges “overlap” isn’t necessarily where the molar ratios of oxygen to methylene chloride “overlap,” so now we’re talking obviousness under 35 USC 103. But in my view, if we’re talking about a single “overlapped” range, as in ClearValue, you’ve got anticipation under 35 USC 102, not obviousness under 35 USC 103.

  96. Suppose the prior art, D1, claims “less than 150″ but all its worked Examples are in the range 80-150. Suppose I now claim the range 5-10, a range that is narrow and, although it is within the earlier claim, it is nowhere near the range particularised and advocated by D1. Suppose the evidence is that no skilled reader of D1 would seriously contemplate values as low as 10 when putting into effect the teaching of D1. For novelty, does one distinguish between the ambit of a fishing claim drafted by a patent attorney for that reference, and what that reference is actually teaching its engineer readers to do?

    In other words, in my hypo, is D1 still prejudicial to novelty in the USA?

  97. Sorry, I missed the exchange above, not all of which had been written when I posted.

    My point is that the semantics seem to be causing a problem. This should be a question of whether or not the putatively anticipatory reference enables the later claimed invention. Not one of whether the later claimed invention is non-obvious over a putatively anticipatory reference.

    I think that could avoid the troubling conflation of anticipation and obviousness.

  98. Sorry, LE, I believe what you call a “sub-range” is what I refer to as an “encompassed” range, i.e., the claimed “encompassed” range is narrower than the broader disclosed range. For example, I would refer to a claimed range of 3 to 6% as being “encompassed” by the broader 1 to 10% range.

    An allegation of “criticality” would be important for such an “encompassed” range, but not because the “encompassed” range is anticipated, which it’s not, but because of obviousness under 35 USC 103. But ClearValue isn’t an instance of an “encompassed” or “sub-range,” but instead a claimed range which is “overlapped” by the disclosed range; the claimed alkalinity of “less than or equal to 50 ppm” was “overlapped” by the disclosed alkalinity of “150 ppm or less. When a claimed range is “overlapped” by the disclosed range, “criticality” is irrelevant becaused the claimed range is anticipated under 35 USC 102; it’s for the same reason that “teaching away” is irrelevant to anticipation. By contrast, if the patentee in ClearValue had claimed an alkalinity of from 1 to 50 ppm, we would have an “encompassed” range, no anticipation, and thus “criticality” would be relevant because we’re now considering obviousness under 35 USC 103.

    The problem here is Atofina, and Lourie’s sloppy analysis in saying two different claimed ranges which were “overlapped” (not “encompassed”) by the the art disclosed ranges were not anticipated (they were if each “overlapped” range is viewed separately).

  99. Ned have I got this right:

    1. In Atofina, the prior art relied upon (shall we call it D1) was a patent publication claiming the range 100-500.

    2. The evidence was that, if one were to follow the instructions in D1, having selected a value of 300, it “would not work”.

    3. The claim in suit claimed and enabled 330-450.

    Do we know whether D1 enabled within the claimed range 330-450? Do we know whether a skilled reader of D1 would seriously contemplate values within the range 330-450? For me, these two questions help to decide whether D1 deprives the claim of novelty.

  100. EG, I’d like you to elaborate just a bit more on what Lourie held in Atofina.

    It has long been hornbook law that a species or subrange within a genus or larger range is patentable if the species or subrange has some criticality. If there is no disclosed criticality, apparently what this case holds is that the claim is anticipated. If there is disclosed criticality, perhaps then the issue becomes obviousness.

    On the latter issue, I think the answer depends on whether the criticality is related to unexpected results, a difference in kind rather than degree, just as Dennis explained.

    But when there is no criticality at all explained in the specification, why should a species or sub range be patentable at all?

    Just for example, I have a patent disclosing that a range of 100 the 500 works. Can any Tom, Dick and Harry get patents on any sub range within the broader range without disclosing any criticality of the sub range? The consequences of such a rule of law would be, in my opinion, catastrophic.

  101. The EPC does allow patents on subject matter that is novel over, but rendered obvious by, the disclosure content of another earlier EPO filing, not published when the claim was filed, but then published before the EPO searches that claim.

    So what? I don’t understand your philosophical objection. Sorry but what’s wrong with the EPC logic?

    One thing is sure: I can easily explain the EPC logic to an engineer inventor (or a CEO, or a politician) but the underlying logic of 35 USC 102 and 103 escapes me. I think we need a patent system which the public can see is logical.

  102. The distinction is arbitrary.

    An item has its characteristics. Obviousness is inherent in those characteristics and mere publishing (having nothing to do with the underlying item) does not change what is present in an item pre-published.

    Obviousness does not lie in the actual patent grant processing (and is divorced from the arbitray of publishing). Obviousness lies in the actual item and in the hands (and mind) of the legal fiction, the PHOSITA who has the actual item at the time of the actual item itself, aside from any patent grant processing step. Already that PHOSITA is distinguishable from the artifical constaints of a patent grant processing, as no mere mortal can know all prior works that a PHOSITA is set to know. The dependence of using an artificial event such as publishing runs counter to the use of the legal fiction. Items pre-published have all the characterisitcs a PHOSTIA needs.

    Please don’t preach the “value” of a system that rests on arbitrariness and away from legal rules. The system you espouse is different, and only different. Not better.

    You glibly insert “for any claim in view” and ignore my original point that claims are not always in view and thus your system fully allows patents on things obvious over one another. Ignoring what I say doesn’t make what I say go away.

  103. In this case the treatment agents were known, and the question was the range of substrates (in this case contaminated water from various sources) they could be used for. In Europe we commonly encounter this situation in patents for the treatment of new patient group with known medicaments. Reading the judgment there seems to be no evidence that water from a new range of sources was enabled to be treated, and a quick read of the patent does not lend much support for a sudden discontinuity at 50ppm. It seems, therefore, that the decision reached was not unreasonable.

    However, it should be borne in mind that these cases are fact sensitive. To over-abstract the decision and derive a rule applicable to the generality of genus/species cases may not be helpful or justified.

  104. EG, you dismiss “enablement” of a sub-range, and particularly of a difference in a subrange too quickly in your analysis.

    Thus your conclusion of “this alleged “failure to assert criticality” by Judge Moore won’t work as a logical basis for distinguishing Atofina.” is itself flawed. Such a legal premise need not rest solely on the Lourie opinion in the distinguished case.

  105. Role you categorize “publishing delay” as “merely” but in a First to File jurisdiction there is no “merely” about it. For any claim in view, the date on which its validity is assessed is a PTO filing date. Everything the public knew about, before that date, counts as the state of the art for obviousness purposes. But nothing as yet unpublished by that date is available for obviousness attacks on that claim.

    The system works well. You should try it sometime.

  106. could the “critical difference” rubric be another way of saying that the disclosure of the larger range is not an enabling disclosure of the narrower range?

    Yes it could. Yes it was. See the posts above.

  107. Such criticality callouts should be in the specification. Enablement is not required to be in the claims.

  108. I believe Judge Moore was correct in ruling that the claimed alkalinity of “less than or equal to 50 ppm” was anticipated by the art disclosed alkalinity of “150 ppm or less.” But her basis for distinguishing Atofina v. Great Lakes Chemical Corp. in ClearValue is very problematic in a number of respects.

    A primary basis for Moore distinguishing Atofina was that the patentee in Atofina had described the claimed temperature range as being “critical” in enabling the claimed process to operate. By contrast, the patentee in ClearValue “had not argued that the 50 ppm limitation” in the claimed process was “critical.” Unfortunately, there is one very significant legal flaw in Moore’s reasoning for distinguishing Atofina: “criticality” of the claimed range was never mentioned by Judge Lourie (who wrote the Atofina opinion) for why the “overlapping” art disclosed range was not anticipatory. Instead, Lourie’s ruling in Atofina of no anticipation of the claimed range was without any regard to any such alleged “criticality.” Accordingly, this alleged “failure to assert criticality” by Judge Moore won’t work as a logical basis for distinguishing Atofina.

    Another huge problem with Moore’s opinion is this “genus versus species” nonsense, but that’s due to the sloppy analysis (and analogies) by Lourie in the Atofina opinion that broached this nonsense, allegedly based on the Titanium Metals case. But the Titanium Metals case makes no such reference to “genus versus species.” The “genus versus species” approach may be appropriate in determining when individual compounds (“species”) are not anticipated by, or rendered obvious over, a disclosure of the compound class or formula (the “genus”) that encompasses those species. But such “genus versus species” phraseology only causes unnecessary confusion when determining when a claimed range of a process is anticipated by an art disclosed process range.

    Another basis for Moore distinguishing Atofina is also problematical, namely, that unlike Atofina, there was no “considerable difference between the claimed range and the range in the art.” “Considerable difference” may be relevant to obviousness, but it is not relevant to anticipation; anticipation is simply based on whether or not THERE IS ANY DIFFERENCE (“considerable” or otherwise) between what is claimed and what is disclosed. This “considerable difference” view is also another unfortunate result of Lourie’s illogical opinion in Atofina.

    If Judge Moore hadn’t had to contend with the earlier ruling in Atofina, she would have had a much more direct (and logically correct) path towards anticipation under 35 U.S.C. § 102: the art disclosed alkalinity of “150 ppm or less” clearly “overlaps” the claimed alkalinity of “less than or equal to 50 ppm.” In fact, by disclosing “or less” with respect to alkalinity, the art clearly taught ranges that would include the claimed “less than or equal to 50 ppm.” But unfortunately for Judge Moore, Judge Lourie’s opinion in Atofina greatly (and in my view unnecessarily) “muddies the water” on when a disclosed process range anticipates a claimed process range. It may take an en banc ruling from the Federal Circuit to sort out the mess created by Lourie’s unfortunate choice of words (and analogies) in Atofina.

  109. In a case like this, could the “critical difference” rubric be another way of saying that the disclosure of the larger range is not an enabling disclosure of the narrower range?

    For the litigators out there: has a patentee ever hired a lab to try duplicating the prior art reference to show that it doesn’t work with the narrower range?

  110. What this suggests is that one needs to say something about criticality when one is claiming ranges. If you put 50 in the claim, you should say that 51 will not work.

  111. Ned, It may be an advocacy issue – if such facts warrant it.

    It is pure conjecture (from where I sit) to say that 50 is critical, 60 is critical (or not) and 150 is critical (or not). I do not know if the facts bear this out. One cannot say, without more, that 60 is close enough, because one does not know the point of Criticality. 51 may be not close enough.

    One cannot advocate without the facts.

    As I mentioned above, if there is indeed a difference in the range, somewhere in the range that numbers become “special” and different, then the prior art may be attackable for lack of enablement or possession. The prior art may be guilty of an overbroad reach in its assumption that the larger range acts as it claims. Prior art cannot anticipate that which it does not enable (recall our discusions on science fiction). If the “speciality” cannot be envisioned, there is no enabling, and the prior art fails to carry its force under 102.

  112. “is just wasting more of my already scarce time.”

    You would have a lot more time if you would stop posting on this blog — what a novel and nonobvious idea….

  113. 6, I think the requirement is that the secret not be generally known, or something to that effect. This admits that something might be known in terms of the patent law, but not known in terms of trade secret law.

    In the future, public use in China will invalidate a patent. But one can hardly believe that public use in China would prevent a Texas company from having a protectible trade secret wrt to the same technology that was not otherwise known in Texas.

  114. 6, regardless of Rader, it has long been the law that one can claim species within an old genus provided the species has some criticality different in kind from that of the genus.

    The Atofina facts, as described here, said that the process would not work as claimed at 300 degrees (claimed range 330-450). But 300 was within the claimed range of the prior art (100-500). There seemed to be sufficient disclosure of crticality in Atofina to support the invention there against an anticipation attack.

  115. Thus it is that prior filings at the EPO which are not published till after the date of the claim are citable for novelty (of course) but (obviously) not for obviousness.

    Does this mean that in reality, the EPO allows claimed subject matter that is obvious over one another, merely due to publishing delay?

  116. anon, you might be right, but apparently then the failure here was one of advocacy. The PO failed to argue crticality. Teaching away may have supported the inference that there was something critical about 50 where 150 would not work so well.

    But the reference did have working examples with 60. That seems close enough to suggest no crticality wrt 50.

  117. Oh dear oh dear. Mr and Ms Haase do have EP-A-2142480 but it is no longer pending. The Haases baulked at the cost of paying somebody to pay the EPO its annuity. They attempted themselves to pay it timeously. They failed. Efforts are now under way, at considerable cost, to get the application back on its feet. But I wonder why, given the severity of the content of the FAOM.

    No sign of Hassick in the EPO FAOM. Might Haases want to tell the EPO Examining Division about it sometime? It might stave off an opposition at the EPO.

  118. I could not find one, however I found EP2142480 which is in reestablishment process. Correspondence there suggests this court case has been very, very expensive for the applicant.

  119. I note that they included the famous line: ” “no reasonable fact finder could conclude that the prior art describes the
    claimed range with sufficient specificity to anticipate this
    limitation of the claim.” Atofina, 441 F.3d at 999″ where Rader himself decided what a reasonable fact finder could find.

    In any case, it is good to see other judges finally making an attempt to make this right. A very succinct decision too, not much meat to digest. If Rader had been more specific as to why no reasonable fact finder could conclude x then perhaps this decision would have been unnecessary.

  120. Thank you Dennis for featuring this case.

    Somebody above wrote about the conflation of novelty and obviousness. Interesting topic for Europeans, because they have such little experience of it.

    The EPC gives obviousness and novelty different but complementary legal roles to play. Novelty stops double patenting and obviousness stops patents on subject matter that is lying in the way (ob via) of the progress of technology. Thus it is that prior filings at the EPO which are not published till after the date of the claim are citable for novelty (of course) but (obviously) not for obviousness.

    There are many such Art 54(3) citations on EPO search reports. The consequence is that, since 1978, the Boards of Appeal of the EPO have been unable to escape the burden of refining ever more clearly the distinction between what takes away novelty and what renders a claim obvious. Even so, selection inventions (like this one) present a special challenge.

    Some non-European patent attorneys get very agitated when they are told that they can use a reference for novelty attacks but not for obviousness attacks. This tells me that they (like the elderly patent judges in Germany) always want to “conflate” (the happy word used above) novelty and obviousness. Why make a fuss about novelty, when the claim is anyway obvious? Who cares whether the case goes down under 102 or under 103? Given 103, what is the legal task still not done, which requires 102 to be present in the Statute?

    Selection inventions are fun. Anybody know if this patent has an EPO family member? If so, what happened to it?

  121. “making its own version of the patented process.”

    They started “making” their own version of a “process”? Really?

    “The court distinguished this case from Atofina based upon its factual conclusion that “there is no allegation of criticality or any evidence demonstrating any difference across the range.” ”

    Thank god they finally set that forth. People all the time quotin’ on Atofina in just any old case. I doubt they’ll stop quotin’ on it but at least we have the Feds rectifying their mistake in a big ol’ decision.

    “It seems to me, however, that if these obviousness principles can be used to extend the anticipatory scope of prior art, then other obviousness principles (such as teaching away) should also be relevant.”

    Nah… besides, even if they are “relevant” just how are they going to be relevant? If they disclose the invention then it is disclosed, 102, end of story, whether they teach away or not is not going to change that no matter how relevant it is.

    At the end of the day though I dislike them having imported whether or not the claimed range is essential into the 102 analysis. I dislike that a lot. Those kinds of questions take a lot of time to answer and polluting my pristine 102 with them is just wasting more of my already scarce time.

    “On appeal, the Federal Circuit affirmed without further analyzing the extent that public availability of knowledge in the form of a third-party prior art document is sufficient to disqualify the knowledge as a trade secret.”

    Now we allow people to claim as a trade secrit things that are publicly known? Mhmm, I see. You “IP” guys have been making this lawl more lolable for so many decades it is hard to know when something I learn that is new to me should surprise me for being so lolable.

  122. I agree,

    Teaching away is but the handmaiden of “critical” range, as what is one but a shadow of the other?

    Looking with intent and withering gaze at “teaching away” would yield the blanket and incontrovertible bare range without more. Why then, re-clothe that bare range with any semblance of secondary consideration such as “criticalness?” For what is the “other” parts of notn critical, but a shade of the teaching away.

    The range is captured or it is not. There is no “captured- but-exception-applies” – that is logic of 103.

    It is. Or it is not.

    If the initial broad range has errors – such as the range does behave differently, then the original range must suffer for its overreach – either through lack of enablement or through lack of possession. The genus captures the species of it does not. There is no grey here to be caught up in 103 style dickering.

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