How to Overcome Obviousness Rejections Based on Results-Effective Variables

August 29, 2012

John S. Harmon PhD

What This Means To You

  • When your invention relies on ranges, dimensions, dosages, or other similar quantities, explain how the invention works and why the claimed quantities are important.
  • During prosecution, argue that the prior art did not recognize the effects of the variable on a desired result and/or that new and unexpected results are obtained with the current invention.
  • Do not admit that the prior art would motivate someone to modify the variables to obtain the claimed subject matter.

Overview

In In Re Applied Materials, Inc., the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) clarified how to overcome an obviousness rejection based on a result-effective variable when claiming ranges, dimensions, dosages, and other similar quantities. Specifically, the Federal Circuit stated that arguing new and unexpected results, or arguing the prior art did not recognize the effect of the variable, may overcome an obviousness rejection based on results-effective variables.

Case Background

Ex parte reexaminations were filed for four related patents owned by Allied Materials containing similar subject matter directed to polishing pads for use with semiconductor manufacturing. The claimed subject matter was related to a polishing pad with grooves of various ranges of pitches, widths, and depths.

During reexamination, each patent was rejected for essentially identical reasons in view of three references. Two of the references disclosed a similarly shaped groove but had different dimensions. However, the third reference disclosed a groove that overlapped with some of the claimed range of dimensions and taught that the dimensions could be altered to optimize its performance and alter the polishing rate.

In addition to the references, the owner of the patents admitted that a person of ordinary skill in the art would have been motivated to alter the groove dimensions in view of the prior art references.

Decision Analysis

The Federal Circuit held that the teachings of the prior art references, in addition to the admission by the owner of the patents, supported a finding that the variables were results-effective variables, and the obviousness rejection was proper.

In coming to this decision, the Federal Circuit noted that the prior art references clearly recognized that the claimed dimensions affected the desired result: the performance of the polishing pad. Therefore, a person of ordinary skill in the art would have been motivated to alter the dimensions disclosed in the prior art references to optimize the performance of the polishing pad.

The Federal Circuit also stated that the patent owner had not provided any evidence of new and unexpected results to support that the claimed ranges of dimensions were critical.

Takeaways

As a result of this case, we recommend that any application claiming ranges, dimensions, dosages, or other similar subject matter, include how and why the claimed ranges provide unexpected results and benefits as compared to the prior art. This case also highlights the importance of presenting arguments during prosecution regarding new and unexpected results if the claims are rejected in view of results-effective variables.

Finally, arguing that a prior art reference does not recognize the effect of a variable on a desired result will be more likely to overcome a rejection as compared to admitting that the references motivate altering the disclosed variables.