Ex parte Shanks
According to a well known adage, “close only counts in horseshoes and hand grenades.” However, some Examiners may want to add claimed ranges during patent prosecution to this adage. After all, MPEP §2144.05(I) states:
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.) (emphasis added).
In Ex parte Shanks (Appeal 2009-010707, in application serial no. 10/612,504, decision issued July 27, 2011) the Board of Patent Appeals and Interferences (BPAI) declined to expand the above-noted adage to include claimed ranges during patent prosecution. The BPAI reversed an Examiner’s rejection even though the prior art cited by the Examiner taught a laser beam with a wavelength in the range of between about 400 nm and about 700 nm, which was argued by the Examiner as close to the claimed “ultraviolet range.” While there was some dispute between the Examiner and the Appellant regarding the boundaries of the ultraviolet range, the degree of closeness between the claimed range and the prior art was not the determinative factor.
Rather, the Examiner’s rejection was reversed because he did not make sufficient findings of fact that one skilled in the art would have expected the prior art range and the claimed range to have the same properties. In the present case, the prior art range of about 400 nm to about 700 nm is visible light for an aiming component; visible being a property not possessed by ultraviolet light.
A lessened learned from Ex Parte Shanks is when addressing rejections pertaining to claimed ranges that are close, but do not overlap with the prior art, it is important for Applicants and Examiners to consider whether the properties are the same. An Examiner has not made a proper rejection, even though a claimed range is close to what is described by the prior art, without providing an explanation as to why the properties are expected to be the same. Legal precedent, such as that included in the above-noted MPEP section, cannot be treated as a per se rule.