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No. 05-378

In the Supreme Court of the United States

Kenneth Harris and Jacqueline B. Wahl, petitioners

v.

Jonathan W. Dudas,
Director, Patent and Trademark Office

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

Paul D. Clement
Solicitor General
Counsel of Record
Peter D. Keisler
Assistant Attorney General
Anthony J. Steinmeyer
Mark S. Davies
Attorneys
Department of Justice
Washington, D.C. 20530-0001
(202) 514-2217

QUESTION PRESENTED

Whether the court of appeals properly concluded that petitioner's patent claims were obvious in light of existing patents.

In the Supreme Court of the United States

No. 05-378

Kenneth Harris and Jacqueline B. Wahl, petitioners

v.

JONATHAN W. DUDAS,
Director, Patent and Trademark Office

ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

OPINIONS BELOW

The opinion of the court of appeals (Pet. App. 1a-11a) is reported at 409 F.3d 1339. The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (Pet. App. 14a-28a) is unre ported. The decision of the Board denying rehearing (Pet. App. 29a-33a) is unreported.

JURISDICTION

The judgment of the court of appeals was entered on May 25, 2005. A petition for rehearing was denied on June 30, 2005 (Pet. App. 12a-13a). The petition for a writ of certiorari was filed on September 16, 2005. The jurisdiction of this Court is invoked under 28 U.S.C. 1254(1).

STATEMENT

1.The Patent Clause of the Constitution empowers Congress "[t]o promote the Progress of Science and use ful Arts by securing for limited Times to * * * Inventors the exclusive Right to their * * * Discoveries." U.S. Const. Art. 1, § 8, Cl. 8. Con gress has implemented the Patent Clause through statu tory enactments, commonly known as the Patent Acts, that have set out the conditions for obtaining a patent. See, e.g., Patent Act of 1790, ch. 7, 1 Stat. 109; Patent Act of 1793, ch. 11, 1 Stat. 318; Patent Act of 1836, ch. 357, 5 Stat. 117; Patent Act of 1839, ch. 88, 5 Stat. 353; Patent Act of 1870, ch. 230, 16 Stat. 198; Patent Act of 1939, ch. 451, 53 Stat. 1212; Patent Act of 1952, ch. 950, 66 Stat. 792.

The Patent Act of 1952, as amended, provides the currently controlling law governing the issuance of pat ents. See 35 U.S.C. 1 et seq. Sections 101 through 103 set out the basic requirements to qualify for a patent. As this Court has explained, those Sections indicate that "patentability is dependent upon three explicit condi tions: novelty and utility as articulated and defined in § 101 and § 102, and non-obviousness * * * , as set out in § 103." Graham v. John Deere Co., 383 U.S. 1, 12 (1966); see United States v. Adams, 383 U.S. 39, 48 (1966); see generally Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146-151 (1989).

Of importance here, Section 103 of the Patent Act articulates the requirement, added explicitly in 1952, that the subject matter of the invention must be "non-obvious." 35 U.S.C. 103. Section 103 specifically states that a patent may not be obtained if the differ ences between the subject matter and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. 103(a). In other words, "[p]atentability is to depend, in addition to novelty and utility, upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person hav ing ordinary skill in the pertinent art." Graham, 383 U.S. at 14 (quoting 35 U.S.C. 103(a)).

2.Petitioners filed U.S. Patent Application 09/797,326 ('326 Application) claiming a nickel-based superalloy for turbine engine blades that experience high temperatures. Pet. App. 1a-2a. "The alloy dis closed in the '326 Application contains nickel, plus twelve additional elements defined by a range of weight percentages." Id. at 2a. For example, Claim 1 refers to a weight percentage of "about 4.3% to about 5.3% Chro mium (Cr)." Ibid. (citation omitted). The '326 Applica tion discloses an embodiment of the claimed alloy-"CMSX(r)- 486"-that has "improved stress-rup ture properties over other alloys." Id. at 2a-3a.

A patent examiner within the Patent and Trademark Office (PTO) rejected the application. See C.A. App. 301-310. The examiner ruled that the claims were obvi ous in view of a previously issued patent on nickel-based alloys, referred to as the "Yoshinari" patent. C.A. App. 303 (citing 35 U.S.C. 103(a)).1 The patent examiner noted, for example, that "the ranges of Yoshinari's [chro mium]" "overlap the subject matter of claim 1." Pet. App. 17a. The Yoshinari patent discloses a weight per cent of chromium of "5 to 14%, preferably 5.5 to 9%" while petitioners' patent gives a range of "about 4.3 to about 5.3." Id. at 17a n.3, 19a; C.A. App. 303-304. More over, "it would have been within the expected skill of a routineer in the art to have optimized the contents of these elements in order to maximize the properties" of the superalloy. Id. at 304. In an effort to overcome the obviousness finding, petitioners suggested that "CMSX(r)-486" displayed "unexpected results relative to the prior art range." Pet. App. 23a. The examiner found that argument unpersuasive. See C.A. App. 308-309.

The PTO's Board of Patent Appeals and Interfer ences (Board) affirmed the examiner's rejection of peti tioners' patent application. The Board stated that a "prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." Pet. App. 21a. It concluded that "[s]uch is the case here." Ibid. The Board addition ally concluded that a "person of ordinary skill in the art would have reasonably expected that the chromium con tent affects the hot corrosion resistance of the superal loy" and thus "would have recognized the suitability of adjusting the content of the disclosed elements within the disclosed ranges." Ibid. "Since the ranges of claim 1 overlap[] the invention of Yoshinari, the burden is shifted to [petitioners] to establish that the claimed in vention would not have been obvious." Ibid. The Board evaluated petitioners' claim that they had carried that burden because CMSX(r)-486 "exhibits superior results." Id. at 22a. The Board found, however, that petitioners "ha[d] not explained why [the] results obtained are unex pected" or why their "single example is representative of the entire claimed range." Id. at 23a.

The United States Court of Appeals for the Federal Circuit affirmed. Pet. App. 1a-11a. The court of ap peals stated that "a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art." Id. at 4a (collect ing cases). The court further explained that, "[e]ven without complete overlap of the claimed range and the prior art range, a minor difference shows a prima facie case of obviousness." Ibid. The court pointed out that eleven of Yoshinari's disclosed ranges completely en compass petitioners' claimed ranges. Ibid. "Only Yoshinari's chromium range (5.0 - 14.0) does not com pletely encompass the '326 Application's chromium range (4.3 - 5.3)." Ibid. Rejecting petitioners' view that Yoshinari's ranges were too broad to disclose any spe cific alloy, the court of appeals noted that this case does not involve ranges that are "too broad to teach a subset range." Id. at 7a.

Having found that the PTO established a prima facie case of obviousness, the court of appeals considered whether petitioners had met their burden of rebutting that prima facie showing. Pet. App. 8a-9a. The court concluded that the improved stress-rupture properties of petitioners' CMSX(r)-486 "does not represent a 'differ ence in kind' that is required to show unexpected re sults." Id. at 9a (citation omitted). Furthermore, be cause the Yoshinari patent taught that "limiting the per centages of chromium" would improve "hot corrosion resistance," the increase in stress-rupture properties of CMSX(r)-486 was not unexpected. Id. at 9a-10a. And, even assuming that the results of CMSX(r)-486 were un expected, petitioners "needed to show results covering the scope of the claimed range," not just the unexpected results of one compound. Id. at 10a.

ARGUMENT

The court of appeals correctly concluded that the PTO properly rejected petitioners' patent application because the claimed invention was obvious. The court of appeals' fact-based decision does not conflict with any decision of this Court or with any decision of the Federal Circuit or another court of appeals. Further review is not warranted.

1.The PTO has primary responsibility for "sifting out unpatentable material." Graham, 383 U.S. at 18. In Graham, the Court identified the "basic factual inqui ries" relevant to the determination whether a claimed invention is obvious within the meaning of Section 103. Id. at 17. "Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art re solved." Ibid. In addition, the Court identified "second ary considerations" such as "commercial success" and "failure of others" that may "give light" to the non obviousness inquiry. Ibid.

When examining a patent for nonobviousness, the PTO employs a two-step process, asking "(1) whether a prima facie case of obviousness has been established, and, if so, (2) whether the affidavits presented are suffi cient to overcome the prima facie case of obviousness." In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (quoting In re Surrey, 319 F.2d 233, 235 (C.C.P.A.), cert. denied, 375 U.S. 930 (1963)).2 "If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated." 745 F.2d at 1472. Accord, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("prima facie case is a procedural tool of patent examination, allocating the burdens of going forward as between examiner and applicant"); In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) (same). See 37 C.F.R. 1.56(b) ("A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable * * * before any consider ation is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.").

2.Here, both the Board and the court of appeals applied a sensible and long-standing refinement of the prima facie obviousness inquiry, by presuming that a chemical composition claim is obvious if it merely identi fies a subset of a previously identified chemical composi tion. Pet. App. 4a, 21a-22a. The presumption is a rea sonable one: If a patent application claims a range of chemical compositions, and the claimed range is within the range of compositions already protected by a patent, the application does not appear to rest on any new learn ing or discovery. The Federal Circuit has repeatedly recognized that a claimed invention that is merely a nar rower version of a patented invention is prima facie ob vious. See, e.g., Kumar, 418 F.3d at 1366 ("A prima fa cie case of obviousness may be made when the only dif ference from the prior art is a difference in the range or value of a particular variable."); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("the existence of overlap ping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious"); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ("slightly different ranges of carbon monoxide con centration" not sufficient for patentability absent a "showing that the claimed range achieves unexpected results relative to the prior art range").

Petitioners' claim in this case is a textbook example of a claim that is obvious in view of the ranges disclosed in the prior art. Eleven of Yoshinari's disclosed ranges completely encompass petitioners' claimed ranges. Pet. App. 4a. The only element that falls partially outside Yoshinari's general range-chromium-is only .2 weight percent below Yoshinari's preferred range. Moreover, the Board found that "a person of ordinary skill in the art would have recognized the suitability of adjusting the content of the disclosed elements within the dis closed ranges." Id. at 21a. Thus, the Yoshinari patent either completely encompasses or substantially overlaps each claimed range. In effect, petitioners are claiming Yoshinari's superalloy using a subset of Yoshinari's ranges.

3.Petitioners concede "[t]here are many cases in which claimed ranges should be found prima facie obvi ous in view of prior art encompassing or overlapping ranges." Pet. 17. Petitioner's central contention is that the court of appeals held that "any time a claimed range is encompassed or overlapped by a prior art range * * *, it is prima facie obvious." Pet. 9 (empha sis added). The court of appeals, however, did not pur port to establish such a "mechanical" rule. Pet. 7.

Instead, the court of appeals simply reiterated and applied the general rule that petitioners concede is proper. The court of appeals stated only a presumptive rule for "this type of claim." Pet. App. 4a. The Board expressed the same point, stating that a "prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." Pet. App. 21a (emphasis added). As the court of appeals recognized, an unwavering rule in those circumstances is not warranted because "a disclosed range might become too broad to teach a subset range." Id. at 7a (citing In re Peterson, 315 F.3d 1325, 1330 n.1 (Fed. Cir. 2003)). An invention that significantly nar rows a broad range, and as a result teaches an invention that one skilled in the art would not have discovered based on the prior art, can be non-obvious.

The decision below is in harmony with prior cases recognizing that a narrow overlap within a broad range may be consistent with a finding of nonobviousness. For example, there is no conflict with In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994), in which the court of appeals stated that "a disclosure of millions of compounds does not render obvious a claim to three compounds, particu larly when that disclosure indicates a preference leading away from the claimed compounds." The court of ap peals here agreed that "a disclosed range might become too broad to teach a subset range." Pet. App. 7a (dis cussing Peterson).

Petitioners argue that this case fits within the In re Baird and In re Peterson exception to obviousness for overly broad ranges. According to petitioners, the Yoshinari patent "ranges encompass millions, if not bil lions, of possible alloys." Pet. 12. As the court of ap peals explained, however, the ranges set out in the Yoshinari patent, when compared to the ranges set out by petitioners, are not too broad to teach a subset range, Pet. App. 7a-8a, particularly when the teachings of the Yoshinari patent are considered. As the Board found, Yoshinari's preferred embodiments and examples pro vide a road map that would lead a person of ordinary skill in the art directly to the ranges claimed by petition ers. Id. at 21a.

In short, this case represents a routine application of the settled rule that an overlap of ranges generally cre ates a presumption of obviousness. The court of appeals expressly recognized that not every overlap warrants the presumption, but concluded that this case was typi cal and governed by the general rule. There is no need for the Court to review that narrow factbound determi nation.

4.Petitioners claim that the prima facie obviousness inquiry "must be based on all of the facts." Pet. 8 (em phasis omitted). See Pet. 17-18. In petitioners' view, the prima facie inquiry must account for all of the obvi ousness factors set out in Graham v. John Deere, supra. Pet. 8-9. That assertion is incorrect. The purpose of the "initial inquiry" is to provide a structured process for the development and consideration of the relevant Gra ham factors. The initial examination in this case focused on the overlap with the prior art, which then placed the burden on the applicant to refute the presumption of obviousness or face rejection. Petitioners' view that all the factors are to be considered at the initial prima facie stage would eliminate the well-established and sensible prima facie process.

5.Petitioners incorrectly claim that the decision below "makes it impossible" for any patent applicant claiming overlapping ranges to avoid the presumption of obviousness. Pet. 19. The court of appeals expressly stated that the prima facie presumption could be over come if, for example, the overlapping ranges led to "un expected results." Pet. App. 9a. Rather than bar all overlapping claims, the court of appeals narrowly held that this particular patent application did not teach any thing unexpected. The claimed alloy cannot qualify as non-obvious because it is similar in composition and qualities to alloys described in the prior art. Ibid. The court of appeals stated the proper rule of law and ap plied it to the facts of this case. Further review is not warranted.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

Paul D. Clement
Solicitor General
Peter D. Keisler
Assistant Attorney General
Anthony J. Steinmeyer
Mark S. Davies
Attorneys

DECEMBER 2005

1 The examiner also rejected petitioners' application as obvious based on a second patent, but the court of appeals did not address that alternative rejection. Pet. App. 3a n.1.

2 The Piasecki court observed that, while the "origin" of that prima facie inquiry is "uncertain," "its ancestry includes mechanisms which were called 'presumptions of unpatentability.'" 745 F.2d at 1472 (quoting In re Henze, 181 F.2d 196, 201 (C.C.P.A. 1950)).