When filing a patent application for inventions that include ranges (e.g., percentages, quantities, or temperatures) such as pharmaceuticals, compositions, or processes, the purpose of the ranges should be included. This may be important for overcoming a prior art reference.
For example, in Ineos USA LLC v. Berry Plastic Corp.,48 Ineos (patent owner) sued Berry Plastic (accused infringer) for patent infringement on its polyethylene based compositions, which was used to form shaped products such as screw caps for bottles. To optimize the cap’s slip properties, manufacturers would typically add a lubricant. Unfortunately, the lubricant added an unpleasant odor or flavor to the food product. Ineos’ invented a composition with specific amounts of polyethylene, lubricants, and additives. This composition solved these odor and flavor problems. Ineos presented claims for the invention in terms of these various components but within certain percentages by weight.
The defendant (Berry), attempting to invalidate the patent as not novel, brought forth a prior art reference that disclosed all the components but with slightly different ranges. Since Ineos did not include why its range was so critical for its anti-slip properties while not affecting the smell or taste of the product, the Federal Circuit found that the prior art reference anticipated or disclosed all the limitations of the claimed invention.
As this case demonstrates, it may be important to indicate, if possible, how operability and functionality of the claimed invention changes within the range. Including the reason fora particular range is critical to the invention and may be helpful to overcome prior art references that disclose an overlapping range. Unfortunately, this information is often obtained through testing, which may be costly or time-consuming to carry out before the patent application is filed but would be very helpful to include in the patent application.