Bottom line: When filing a patent application directed to pharmaceuticals, compositions, processes or the like that include ranges (i.e., percentages, quantities or temperature ranges) in the claims, an important patent drafting tip is to include the criticality or purpose of the specified range which may be important in overcoming a prior art reference.
In Ineos USA LLC v. Berry Plastic Corp. (Fed. Cir. 2015), the patent at issue was directed to polyethylene based compositions which can be used to form shaped products such as screw caps for bottles. In order to optimize the cap’s slip properties, manufacturers typically added a lubricant. Unfortunately, the lubricant added an unpleasant odor or flavor to the food product. The invention was directed to a composition having specific amounts of polyethylene, lubricants and additives to solve the odor and flavor problems. The patent owner claimed the invention in terms of these various components but within certain percentages by weight.
The defendant (Berry; NYSE:BERY), in an attempt to invalidate the patent for being not new, brought forth a prior art reference that disclosed all of the components but with slightly different ranges that overlapped part of the claimed ranges. The Court of Appeals found that “[w]hen a patent claims a range, as in this case, that range is anticipated by a prior art reference if the reference discloses a point within the range.”
This was not the case here since the prior art reference disclosed a range, not a point within the claimed range. Thus, the applicable test was: “[i]f the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges.” (emphasis added). The court is focusing on the operational differences due to the different ranges between the prior art reference and the claimed invention.
In the instant case, the Appellate Court explained that the patent owner (Ineos) did not establish that the slip properties and the odor and flavor mitigation properties would be different if the ranges disclosed in the prior art reference were used instead. In other words, the ranges made no difference in the operation or benefits of the claimed invention. The patent owner tried to argue that the claimed ranges reduced manufacturing costs and improved the appearance. Nevertheless, the Appellate Court indicated that these benefits were not related to operability or functionality. The differences must be related to the stated functions.
In drafting a patent application, it may be beneficial to indicate how operability and functionality of the claimed invention changes as the ranges are being fine-tuned – if such information is available. This could provide information as to why a particular range is critical to the invention in order to overcome prior art references that disclose an overlapping range. Oftentimes, this information is obtained through testing with various tests which may be difficult or impossible to come by before the patent application is filed due to time and cost constraints.
I invite you to contact me with your patent questions (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.