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Happy New Year to all! But not so happy for Applied Materials, Inc., a semiconductor manufacturer in California. Yesterday, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a decision largely affirming a Patent Examiner’s rejection of an Applied Materials patent application covering a key semiconductor manufacturing process.
Yesterday’s decision
revolves mainly around the issue of “optimization of ranges.” To illustrate
this issue, assume that the prior art for car-wash technology discloses the
placement of water-dispensing nozzles in certain locations inside the car-wash.
Let’s say that a client invents a car-wash with water-dispensing nozzles placed
in locations not disclosed in the prior art. Is this client’s invention
patentable? As a Florida patent attorney with over 10 years of experience
dealing with patent applications, I get this question a lot. The answer is not
so simple to explain.
With regard to the
issue of “optimization of ranges,” the Manual of Patent Examining Procedure
states that generally, differences in concentration or temperature will not
support the patentability of subject matter encompassed by the prior art unless
there is evidence indicating such concentration or temperature is critical.
“[W]here the general conditions of a claim are disclosed in the prior art, it
is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955).
Applicants can rebut
a prima facie case of obviousness based on overlapping ranges by showing the
criticality of the claimed 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.”
In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
The Applied Materials
case involved a claim including the optimized calibration of a thin
film-depositing element. The claim was rejected under 35 U.S.C. 103(a) for
obviousness in light of the prior art, which generally disclosed optimization
of thin-film depositing elements. The Board upheld the obviousness rejection
due to a lack of criticality in the Applicant’s choice of calibration of the
thin film-depositing element, as evidenced by a lack of unexpected results.
This decision sheds
light on the car-wash example above. If the water-dispensing nozzles are placed
in novel locations with the expected result being increased car-washing
capabilities, then the client’s car-wash invention is probably obvious and not
patentable. But if the locations of the water-dispensing nozzles leads to an
unexpected result, such as the buffing of car paint, then the client’s car-wash
invention is non-obvious and may very well be patentable.
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.