For “result-effective” variables in which a relationship between property and effect is (at least qualitatively) known in the prior art, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. “Such overlap itself provides sufficient motivation to optimize the ranges” because of “[t]he normal desire of scientists or artisans to improve upon what is already generally known.” In cases in which the disclosure in the prior art has been found insufficient to find a variable “result-effective,” there was essentially no disclosure of the relationship between the variable and the result in the prior art. The outcome of optimizing a result-effective variable is only patentable if the claimed ranges are “critical” and “produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.”
Background / Facts: The claims on appeal from the BPAI are directed to “sufficiently rigid” pads for chemical mechanical polishing (“CMP”) with grooves that advantageously distribute slurry, remove waste material, and increase pad life. The amendments on reexamination cover pads (or an apparatus with a pad) for CMP with grooves having a particular depth “between about 0.02 inches and 0.05 inches,” a particular width “between about 0.015 inches and 0.04 inches,” a particular pitch “between about 0.09 inches and 0.24 inches,” and “side-walls that are substantially perpendicular to the polishing surface.”
Issue(s): Whether the optimized dimensions being claimed were merely the exercise of ordinary skill in the art.
Holding(s): Yes. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation when the optimized variables are “result-effective” variables. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. Here, the prior art was found to clearly disclose that the different variables affect the polishing rate and uniformity, that one of ordinary skill in the art can alter these variables to achieve desired polishing properties, and so on. Nothing indicates that the optimization of the variables was anything other than the exercise of ordinary skill in the art.