08/15/2017

Claims With Ranges, the Result-Effective Variable, and In re Applied Materials


Claims With Ranges, the Result-Effective Variable, and In re Applied Materials

Tom Brody

Claims can be drafted to require a parameter associated with a value (number), range, or algorithm. Where a claim includes a parameter associated with a value, range, or algorithm, enhanced resistance to obviousness rejections can result because of case law requiring that the prior art disclose overlap and case law requiring the prior art disclose a goal-to-be-achieved in optimizing the value of the parameter. Case law requiring overlap is In re Peterson and In re Geisler, while case law requiring that the prior art disclose a goal-to-be-achieved in optimizing the parameter is In re Antonie and In re Boesch. In re Applied Materials describes both requirements. Rebuttal strategies include arguing that the prior art fails to disclose the same parameter as that required by the claim. Another strategy is to argue that the prior art fails to disclose one or both of overlap and the goal. Yet another type of rebuttal is to demonstrate that the prior art’s disclosed goal is associated with a parameter, but that it is not the same type of parameter as that is recited in the claim. Application of the above cases by the Board and examiners is unpredictable, because the Board and examiners sometimes base the rejection solely on In re Aller or only In re Gal (”design choice”). In re Aller and In re Gal case law are of low-stringency, and these bodies of case law work to the disadvantage of the inventor. 

98 J. Pat. & Trademark Off. Soc’y 618(2016)

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