Ex parte Mellott

June 24, 2011 – Blog Post

Although this case was not a win on all rejections, the small win and notable issue in this case is whether it is obvious to optimize a variable which is recognized in the art as result effective even if the art does not disclose an overlapping range.

The invention in Mellott and Taylor (Appeal No. 2010-004914) is a photovoltaic device comprising a plurality of specific layers, wherein one specific layer comprising silicon oxide “has about a quarter-wavelength thickness and is located on and directly contacting the graded layer.” The cited reference disclosed that the “[d]esired attributes may be obtainable by adjusting the compositions or thicknesses of the coating layers or layers” and “by proper choice of thin film materials and thickness, the individual reflected light beams can destructively interfere thereby reducing the observed visual reflectance.” The Examiner argued that “one of routine skill in the art would have found it obvious to modify the thickness of the graded iridescence suppressing layer in order to obtain desired optical properties” and “discovering an optimum value of a result effective variable involves only routine skill in the art.”

The Board recognized that “Optimizing a result-effective variable within a disclosed range would have involved no more than routine experimentation. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980)” and “it is generally considered the have been prima facie obvious to one of ordinary skill in the art to vary disclosed parameters to some extent for purposes of optimization. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).” However, in view of the fact that the reference did not disclose an overlapping thickness range and the Examiner failed to provide technical reasoning to show that routine optimization of layer thickness would have resulted in said range, the Board held that the Examiner used impermissible hindsight to reach his conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)( “A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”).

This reversal reaffirms the interpretation of M.P.E.P. § 2144.05 II that in order to establish a prima facie case of obviousness with optimization of a range, the claimed range must both

(1) overlap or lie inside ranges disclosed by the prior art, and
(2) be recognized in the prior art as a result effective variable that can be optimized.