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. Further, “it is not inventive to discover the optimum or workable ranges by routine experimentation, because the desire to improve results would motivate skilled artisans to experiment with, and improve upon, known conditions in the prior art.”
Background / Facts: The application on appeal here from rejection at the PTO is directed to clarifying waste water, or raw water, by removing solid contaminants that are suspended in the water. To do so, the claims variously recite different ranges of chemicals, from broader ranges to smaller, more optimized ranges.
Issue(s): Whether the disclosed chemical compound ranges are anticipated or obvious in view of the prior art.
Holding(s): Yes. Because the claims “undoubtedly ‘cover[] several compositions,’ and because at least one such composition was disclosed in [the cited art] for each of those claims, [the art] anticipates.” Further, even though certain claims are narrower and the cited art may not specifically disclose their smaller, more optimized ranges, these ranges do not appear to be exceptional in any way and are nevertheless obvious. “Where a variable is known to affect a particular desirable result, i.e., is what has been called a ‘result-effective’ variable, the ‘overlap itself provides sufficient motivation to optimize the ranges,’ and ‘it is not inventive to discover the optimum or workable ranges by routine experimentation,’ because the desire to improve results would motivate skilled artisans to experiment with, and improve upon, known conditions in the prior art.”