{"id":2651,"date":"2020-01-10T18:01:00","date_gmt":"2020-01-10T23:01:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2651"},"modified":"2020-01-26T19:04:50","modified_gmt":"2020-01-27T00:04:50","slug":"lack-of-showing-of-criticality-dooms-claims-with-ranges-overlapping-the-prior-art","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2651","title":{"rendered":"Lack of Showing of Criticality Dooms Claims with Ranges Overlapping the Prior Art"},"content":{"rendered":"\n

Genentech, Inc., v. Hospira, Inc.<\/a>, [2018-1933] (January 10, 2020), the Federal Circuit affirmed the PTAB holding claims 1\u20133 and 5\u201311 of U.S. Patent 7,807,799 directed to methods of purifying certain antibodies and other proteins unpatentable as anticipated or obvious.<\/p>\n\n\n\n

Important to the invention\nwas operating at a low temperature to eliminate the need for subsequent\npurification steps, the claims specified a range of \u201cabout 10\u00b0C to about 18\u00b0C\u201d,\nwhich the Federal Circuit found overlapped the prior art range of \u201c18\u201325\u00b0C,\u201d regardless\nof the construction of \u201cabout 18\u00b0C.\u201d The Federal Circuited noted that the\npatentee own proposed construction for \u201cabout 18\u00b0C\u201d embraces temperatures up to\n19\u00b0C, which further reinforces the overlap with the prior art\u2019s disclosed\ntemperature range.<\/p>\n\n\n\n

The Federal Circuit said a\nprior art reference that discloses an overlapping but different range than the\nclaimed range can be anticipatory, even where the prior art range only\npartially or slightly overlaps with the claimed range.  Once a patent challenger has established,\nthrough overlapping ranges, its prima facie case of anticipation, the court\nmust evaluate whether the patentee has established that the claimed range is\ncritical to the operability of the claimed invention.  The Federal Circuit found that the the\npatentee failed to show criticality of the range.<\/p>\n\n\n\n

As to obviousness, the\nFederal Circuit noted that even a slight overlap in range establishes a prima\nfacie <\/em>case of obviousness, and that the burden of production falls upon the\npatentee to come forward with pertinent evidence that the overlapping range\nwould not have been obvious in light of the prior art.  One way in which the patentee may rebut the\npresumption of obviousness is by showing that there is some-thing special or\ncritical about the claimed range.  The Federal\nCircuit found that presumption of obviousness applies here, and the Board found\nthat Genentech failed to establish criticality for the claimed temperature\nrange, which Genentech did not appeal.\n\nThe Federal Circuit said that another way in\nwhich the presumption can be rebutted is by showing that a process parameter,\nsuch as temperature, was not recognized as \u201cresult-effective.\u201d  However, Federal Circuit said that the Board\nreasonably found that a skilled artisan would have been motivated to optimize\nthe temperature given the teachings of the prior art, and that given the ease\nwith which temperature can be varied, finding an optimal temperature range\nwould have been nothing more than routine experimentation.\n\n\n\n<\/p>\n","protected":false},"excerpt":{"rendered":"

Genentech, Inc., v. Hospira, Inc., [2018-1933] (January 10, 2020), the Federal Circuit affirmed the PTAB holding claims 1\u20133 and 5\u201311 of U.S. Patent 7,807,799 directed to methods of purifying certain antibodies and other proteins unpatentable as anticipated or obvious. Important … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,98],"tags":[],"class_list":["post-2651","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-ranges"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2651","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2651"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2651\/revisions"}],"predecessor-version":[{"id":2652,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2651\/revisions\/2652"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2651"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2651"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2651"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}