How can an applicant rebut a prima facie case of obviousness for overlapping ranges?
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.'”
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Topics:
Amounts,
And Proportions,
MPEP 2100 - Patentability,
MPEP 2144.05 - Obviousness Of Similar And Overlapping Ranges,
Patent Law,
Patent Procedure