In re Haase: Anticipation and Obviousness of Ranges

Category: 103
 By: Eric Paul Smith, Contributor   
TitleIn re Haase, No. 2012-1690 (Fed. Cir. Oct 30, 2013) (nonprecedential).
[1] "Mr. Haase challenges the anticipation rejections […] He principally contends that the allegedly “critical” molecular-weight ranges for ammonium polymers in his application do not exist in Hassick."
In re Haase at *6-7.
[2] "The first category of rebuttal evidence [as to claim 3, and reiterated for claims 4, 22, and 76] pertains to unexpected results, for which Mr. Haase submitted data allegedly showing that his claimed methods outperformed Hassick’s in various comparisons of water-clarity results."
Id. at *10 (text added).
[1] "All that is required to meet claims 1, 2, 56, and 75 is one individual ammonium polymer compound within the claimed range, no matter what else is in the composition or how much of the molecular-weight distribution disclosed in Hassick overlaps with the claimed ranges."
Id. at *7.
[2] "[T]he PTO established a prima facie case of obviousness for claim[s] 3[,] [4, 22, and 76], and Mr. Haase’s rebuttal evidence failed to overcome it [because his submitted evidence of unexpected results, a comparison of Mr. Haase's own test results and the references, did not correlate directly with the recited language in claims 3, 4, 22, and 76]."
Id. at *12 (text added).
Procedural History“Richard Haase appeals from a decision of the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) that sustained the Examiner’s final rejection of all claims . . . .” In re Haase at *1. “Before the application wound its way up to the Board, it spent nearly six years in front of the Examiner.” Id. at *4.
Legal Reasoning (Prost, Plager, Taranto. Per Curiam)
Summary of the Claims“All but one of the independent claims now at issue covers a process that combines an ammonium polymer with an aluminum polymer. [I]ndependent claims 1 through 3 require, in addition to an aluminum polymer, an ‘effective amount of at least one cationic ammonium polymer’ that must include ‘at least one cationic ammonium polymer having [molecular weights within a variety of ranges].’ Independent claims 56 and 75 are similar, but the ranges are broader . . . . Independent claims 4 and 76 replace the ‘ammonium polymer’ language with ‘at least one polyacrylamide’ (described as one kind of ammonium polymer) . . . . Independent claim 22 stands apart from the other claims at issue here. Directed specifically to removing algae from water, it requires an ammonium polymer . . . but does not call for an aluminum polymer.” In re Haase at *3.
Scope of the Claims“None of the claims at issue requires a particular amount of reduction [of water clarity].” Id. at *3.
[1] Anticipation by Hassick of Claims 1, 2, 56, and 75
Legal Standard: Anticipation of Ranges“When a claim recites a limitation that captures a range of values, it is anticipated if a specific example falling within that range is disclosed in the prior art. But if the prior art itself also discloses only a range of values, and the new claim recites an overlapping but different rand, we have said that the prior-art reference must describe the claimed range with sufficient specificity to anticipate the limitation of the claim—a broad prior-art disclosure that encompasses a narrower claimed range is sometimes not enough for anticipation.” In re Haase at *5 (citations and internal quotation marks omitted).
Anticipation of Claims 1, 2, 56, and 75“[T]he Board found that Hassick discloses a specific example of a raw-water-treatment process that reduces turbidity using an aluminum polymer . . . combined with a commercially available ammonium polymer . . . [that] would inherently include at least one ammonium polymer compound that has a molecular weight of about 1,000,000 . . . . The anticipation rejections of claims 1, 2, 56, and 75 follow directly from those findings. As construed, claims 1, 2, 56, and 75 require . . . just one ammonium polymer compound that falls within the claimed ranges . . . and just some reduction in turbidity.” Id. at *6 (citations and internal quotation marks omitted).
[2] Obviousness of Claims 3, 4, 22, and 76
Legal Standard: Obviousness of Ranges“If the relevant comparison between disputed claim limitations and the prior art pertains to a range of overlapping values, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” In re Haase at *8 (citations and internal quotation marks omitted). “But a prior-art reference that discloses alternatives does not, simply by preferring some alternatives, ‘teach away’ from the non-preferred alternatives . . . .” Id. at *9 (citations and internal quotation marks omitted).
Obviousness of Claim 3 over Hassick“Hassick not only discloses a preferred molecular weight range for the ammonium polymer . . .; it also discusses the use of different molecular weights in different rates—all with the aim of reducing turbidity in the system being treated. Those disclosures provide substantial evidence to support the finding [of obviousness]. We also find substantial evidence to support the Board’s conclusion that Mr. Haase’s rebuttal evidence seeking to overcome this prima facie case of obviousness was unpersuasive.” Id. at *10 (citations and internal quotation marks omitted).
Obviousness of Claims 4 and 76 over Kigel in View of Simmsgeiger“[The Board] read Kigel to disclose a method for separating suspended particles in waster water using an aluminum polymer and a polyacrylamide in order to reduce turbidity. It read Simmsgeiger to teach the . . . molecular weight . . . range . . . . Those findings sufficed to make out a prima facie case of obviousness . . . .” Id. at *12 (citations and internal quotation marks omitted). “As to [Mr. Haase’s] evidence purporting to show unexpected results, the Board found a critical flaw—that Mr. Haase did not demonstrate that his tests compared his claims with the Kigel-Simmsgeiger combination, rather than with Kigel alone.” Id. at *12-13.
Obviousness of Claim 22 over Nier in View of Hassick“The Board read Nier to teach a process for removing algae using an algaecide [and] . . . aids includ[ing] ammonium polymers . . . usually [within the molecular weight range].” Id. at *14. “[T]he combination of Nier’s teachings to improve water clarity by reducing algae, along with Hassick’s teaching that higher weight ammonium polymers . . . increase effectiveness and reduce turbidity, would have led to the combination of their similar teachings.” Id. at *14 (citations and internal quotation marks omitted).
For the foregoing reasons, we uphold the Board’s rejection of independent claims 1-4, 22, 56, 75, and 76.
In re Haase at *15 (text added).
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