【請求項】數值限定發明

【請求項】數值限定發明

這是一個數值限定發明的判例，讀它只是因為想了解怎麼“思考”數值限定發明。

判例
IN RE LANCE G. PETERSON and IOANNIS VASATIS

第一步考慮“A. The Prima Facie Case of Obviousness ”

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.

下列雖然是判例中的文字，但它大部份的內容都可以在MPEP 2144.05找得到。

In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness. E.g., In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37 (concluding that a claimed invention was rendered obvious by a prior art reference whose disclosed range (“about 1-5%” carbon monoxide) abutted the claimed range (“more than 5% to about 25%” carbon monoxide)); In re Malagari, 499 F.2d at 1303, 182 USPQ at 553 (concluding that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (0.020-0.035% carbon) overlapped the claimed range (0.030-0.070% carbon)); see also In re Geisler, 116 F.3d at 1469, 43 USPQ2d at 1365 (acknowledging that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (50-100 Angstroms) overlapped the claimed range (100-600 Angstroms)). We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium).

第二步考慮“B. Rebuttal of the Prima Facie Case”

要反駁Prima Facie Case，僅是單單一個下位概念的範圍具有不可預期的效果是不夠的，必須是相對於整個“要申請專利之範圍”的範圍，具有不可預期的效果才可。

We turn next to Peterson’s attempt to rebut the prima facie case of obviousness. In general, an applicant may overcome a prima facie case of obviousness by establishing “that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Geisler, 116 F.3d at 1469-70, 43 USPQ2d at 1365 (alteration in original) (quoting In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936). That same standard applies when, as here, the applicant seeks to optimize certain variables by selecting narrow ranges from broader ranges disclosed in the prior art. See In re Geisler, 116 F.3d at 1470, 43 USPQ2d at 1365 (“Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range.” (quoting In re Antoine, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977))); In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976) (recognizing that “ranges which overlap or lie inside ranges disclosed by the prior art may be patentable if the applicant can show criticality in the claimed range by evidence of unexpected results”). Moreover, the applicant’s showing of unexpected results must be commensurate in scope with the claimed range. See In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971))).