In Re: Brandt , 886 F.3d 1171 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: GREGORY A. BRANDT, JOHN B. LETTS,
FIRESTONE BUILDING PRODUCTS COMPANY,
LLC,
Appellants
______________________
2016-2601
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/652,858.
______________________
Decided: March 27, 2018
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ARTHUR M. REGINELLI, Renner, Kenner, Grieve,
Bobak, Taylor & Weber, Akron, OH, argued for appel-
lants. Also represented by LAURA J. GENTILCORE, RAY L.
WEBER.
ROBERT MCBRIDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Andrei Iancu. Also represented by
NATHAN K. KELLEY, MOLLY R. SILFEN, COKE MORGAN
STEWART.
______________________
Before LOURIE, REYNA, and TARANTO, Circuit Judges.
REYNA, Circuit Judge.
2 IN RE: BRANDT
Gregory A. Brandt, John B. Letts, and Firestone
Building Products Company LLC appeal from a decision
by the Patent Trial and Appeal Board affirming an exam-
iner’s obviousness rejection of their patent application
claims related to construction board for a covered roof.
Because substantial evidence supports the Board’s factual
findings, and the Board did not err in its conclusion of
obviousness, we affirm.
BACKGROUND
On October 16, 2012, inventors Brandt and Letts (to-
gether, “Brandt”) filed Patent Application No. 13/652,858
(“’858 application”) with the United States Patent Office.
The ’858 application relates to “high density polyurethane
or polyisocyanurate construction boards, as well as their
use in flat or low-slope roofing systems.” J.A. 17. Follow-
ing examination, only independent claims 1 and 3 re-
mained in the ’858 application. Those claims are directed
to a covered roof and a method for applying covering to a
roof, respectively. Both claims are at issue in this appeal.
Figure 2 of the ’858 application depicts the covered
roof:
J.A. 40. As shown in Figure 2, the covered roof consists of
stratified layers comprising a roof deck 32, an insulation
board 34, and a high-density coverboard 10. The ’858
IN RE: BRANDT 3
application explains that coverboards “add integrity to the
roof.” J.A. 18. When layered atop the insulation board, as
in Figure 2, the coverboard can protect the insulation
board which is “prone to denting or damage due to the
fact that insulation boards are low density cellular mate-
rials.” Id.
Representative claim 1 provides:
1. A covered roof comprising:
(a) a roof deck;
(b) an insulation board including a polyu-
rethane, a polyisocyanurate, or a mix of
polyurethane and polyisocyanurate cellu-
lar structure, and said insulation board
having a density that is less than 2.5
pounds per cubic foot; and
(c) a coverboard including a polyurethane,
a polyisocyanurate, or a mix of polyure-
thane and polyisocyanurate cellular struc-
ture, said coverboard having a density
greater than 2.5 pounds per cubic foot and
less than 6 pounds per cubic foot and a
first planar surface and a second planar
surface, said first planar surface and sec-
ond planar surface each having a facer po-
sitioned adjacent thereto.
J.A. 130 (emphasis added). The only limitation at issue in
this appeal involves the density range of the coverboard
emphasized above.
On March 14, 2013, the examiner issued a Final Of-
fice Action rejecting claims 1 and 3 under 35 U.S.C.
§ 103(a) over U.S. Patent Application Publication No.
2006/0096205 (“Griffin”) in view of U.S. Patent Nos.
5,891,563 (“Letts”) and 6,093,481 (“Lynn”). J.A. 91, 93.
Griffin discloses a prefabricated roofing panel with a
4 IN RE: BRANDT
coverboard having a polymer material core layer with a
density “between 6 lbs/ft3 and 25 lbs/ft3 and preferably a
density of at least 8 lbs/ft3.” J.A. 207. In addition, Griffin
describes the high-density core layer as possibly “con-
tain[ing] various powdered and liquid fillers, fiber rein-
forcements, fire-retardants, fungi growth-inhibiting
agents, etc. to reduce the cost and/or modify the proper-
ties of the high-density core layer,” including modifica-
tions that affect the “compressive strength, the flexibility,
the friability, [and] the fire resistance of the core layer.”
J.A. 208. Lynn is directed to a method for manufacturing
insulation board that involves employing rigid foam
between laminate facing sheets. J.A. 222 col. 2 ll. 12–21.
Lynn describes the rigid foam layer as a polymeric compo-
sition and lists as “suitable polymers,” both polyurethane
and polyisocyanurate. J.A. 224 col. 5 ll. 42–52. Once
employed, this foam layer reaches a “desired bulk density
which is generally between 0.5 and 10, and preferably
between 1 and 5 pounds per cubic foot.” Id. col. 5 ll. 61–
65.
The examiner used Letts to show that composite
boards comprising polyisocyanurate and polyurethane
materials were known and used in the construction of
covered roofs. J.A. 94. The examiner’s application of
Letts is not at issue in this appeal.
In rejecting the claims, the examiner found that Grif-
fin’s disclosure of a coverboard density range between 6
and 25 pounds per cubic foot abuts but “does not specifi-
cally disclose the density of the coverboard being less than
6 pounds per cubic foot.” J.A. 94. The examiner deter-
mined that Griffin suggests that the fillers to the cover-
board, such as fire-retardants, may causevariations in
density by altering the coverboard’s composition and
compressive strength. Id. In addition, the examiner
found that Lynn teaches a rigid foam made from polymer-
ic material with a bulk density ranging between 1 and 5
pounds per cubic foot that does overlap with the density
IN RE: BRANDT 5
range disclosed in the ’858 application. Id. Based on the
combined teachings of Griffin and Lynn, the examiner
concluded that it would have been “an obvious design
choice” for a skilled artisan to have a coverboard with a
density of less than 6 pounds per cubic foot. Id.Brandt appealed the examiner’s rejection to the Pa-
tent Trial and Appeal Board (“Board”). In its appeal,
Brandt amended claims 1 and 3 to remove limitations
related to the insulation board and iso index. J.A. 107. In
her answer, the examiner issued a new rejection under
§ 103(a) of claims 1 and 3 based on Griffin in view of
Lynn. J.A. 141. Specifically, the examiner found that it
would have been obvious to a skilled artisan to have “a
cover board that had a density of less than 6 pounds per
cubic feet as an obvious design choice and also due to
margin of error by the slightest percentage.” J.A. 142.
The Board affirmed the examiner’s rejection. J.A. 2.
The Board found that the claimed range for the cover-
board in the ’858 application of “less than 6 pounds per
cubic foot” does not overlap with Griffin’s disclosed range
of between 6 and 25 pounds per cubic foot. J.A. 5. While
not overlapping, based on the examiner’s factual findings,
the Board found that the difference in the ranges was
“virtually negligible” and “could not be smaller.” Id.
Relying on Haynes International, Inc. v. Jessop Steel Co.,
8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993), the Board thus
determined that claims 1 and 3 were prima facie obvious
based on the general rule that “when the difference be-
tween the claimed invention and the prior art is the range
or value of a particular variable, then a prima facie
rejection is properly established when the difference in
the range or value is minor.” Id. (citing Titanium Metals
Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985)). The Board found that Brandt failed to rebut this
prima facie rejection through argument or evidence of
unexpected results or teaching away. J.A. 5–6. The
Board also found that Brandt did not show that Griffin’s
6 IN RE: BRANDT
disclosed low-end range of 6 pounds per cubic foot would
have any different properties from a coverboard with a
lower density of 5.99 pounds per cubic foot. J.A. 6. After
considering the evidence as a whole, the Board concluded
that the examiner did not err in rejecting as obvious
claims 1 and 3 of the ’858 application. Id.Brandt and the assignee of the ’858 application, Fire-
stone Building Products Company, LLC, appealed. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
We review Board decisions in accordance with the
Administrative Procedure Act, 5 U.S.C. § 706(2) (2012).
Dickinson v. Zurko, 527 U.S. 150, 152, 165 (1999). Under
the APA, we review the Board’s legal conclusions de novo
and its factual findings for substantial evidence. ACCO
Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed.
Cir. 2016). Substantial evidence is “such relevant evi-
dence as a reasonable mind might accept as adequate to
support a conclusion.” In re Gartside, 203 F.3d 1305,
1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y.
v. NLRB, 305 U.S. 197, 229 (1938)).
Obviousness is a question of law with underlying fac-
tual findings relating to the “scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
review the Board’s underlying factual findings for sub-
stantial evidence and its legal conclusion on obviousness
de novo. In re Mouttet, 686 F.3d 1322, 1330–31 (Fed. Cir.
2012).
IN RE: BRANDT 7
DISCUSSION
Appellants make two arguments on appeal. First,
Appellants challenge the Board’s finding of a prima facie
case of obviousness based on Griffin’s disclosed cover-
board density range because that range does not facially
overlap with the ’858 application’s claimed coverboard
density range. Second, assuming the Board properly
found a prima facie case, Appellants contend that the
Board erred in finding that the prior art does not teach
away from the claimed invention.
A. Prima Facie Obviousness
Patent examination usually involves a negotiation be-
tween the Patent Office and an applicant about the metes
and bounds of a potential property right. See Phillips v.
AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en
banc) (“[T]he prosecution history represents an ongoing
negotiation between the PTO and the applicant, rather
than the final product of that negotiation.”). During the
course of examination, the examiner issues initial rejec-
tions for application claims it considers unpatentable, and
the applicant in turn may try to traverse those rejections
through, inter alia, legal argument, evidence, and claim
amendments. 35 U.S.C. § 132(a); 37 C.F.R. § 1.111. Upon
review of the applicant’s reply to the rejections, if the
examiner finds the claims satisfy the conditions of pa-
tentability, the examiner issues a Notice of Allowance. 35
U.S.C. § 131; 37 C.F.R. § 1.311. If not, the examiner
issues a Final Office Action rejecting the claims for a
second time, or the examiner can alternatively reconsider
the application before final action. 35 U.S.C. § 134; 37
C.F.R. §§ 1.112, 1.113. As is the case here, if the examin-
er issues a Final Office Action, the applicant can appeal
those twice-rejected claims to the Board, or alternatively
seek continued examination. Id.; 37 C.F.R. § 1.114. If the
applicant timely requests continued examination, the
above process is repeated.
8 IN RE: BRANDT
Given the back-and-forth nature of examination, it is
important for the examiner to have a few procedural tools
to aid her efforts to issue as patents only those claims
that meet the requirements of the Patent Act—the fun-
damental obligation of the Patent Office. 35 U.S.C. § 2(“The United States Patent and Trademark Office
. . . shall be responsible for the granting and issuing of
patents.”); id. § 131 (“The Director shall cause an exami-
nation to be made of the application and the alleged new
invention; and if on such examination it appears that the
applicant is entitled to a patent under the law, the Direc-
tor shall issue a patent therefor.”). One of these proce-
dural tools is the prima facie case, an evidentiary burden-
shifting device available to the examiner in the initial
stage of examination. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471–72
(Fed. Cir. 1984). An examiner can find a prima facie case
of unpatentability upon initial review of the prior art or
on any other statutory condition of patentability. In re
Oetiker, 977 F.2d at 1445. If the examiner establishes a
prima facie case, the burden shifts to the applicant to
come forward with rebuttal evidence or argument. Id.; see
Mouttet, 686 F.3d at 1330. The examiner then considers
the evidence as a whole before reaching a conclusion on
the claims’ patentability under 35 U.S.C. § 103(a). Leo
Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir.
2013) (“Whether before the Board or a court, this court
has emphasized that consideration of the objective indicia
is part of the whole obviousness analysis, not just an
afterthought.”); In re Huai-Hung Kao, 639 F.3d 1057,
1066 (Fed. Cir. 2011). This burden-shifting framework
makes sense during patent examination because an
examiner typically has no knowledge of objective consid-
erations, and those considerations “may not be available
until years after an application is filed.” In re Cycloben-
zaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1080 n.7 (Fed. Cir. 2012).
IN RE: BRANDT 9
Appellants argue that the Board erred by applying a
per se rule that whenever the differences between a prior
art reference’s disclosed range and the application’s
claimed range are close, a prima facie case of obviousness
is established. Appellants’ Br. 11. We find no such error.
The Board did not apply a per se rule. Rather, it ground-
ed a prima facie obviousness conclusion on the facts
before it. The Board specifically agreed with the examin-
er’s factual finding that the difference between the
claimed range and prior art range was “virtually negligi-
ble.” J.A. 5. This finding accounted for manufacturing
tolerance levels because “precise results are not always
achieved and tolerance levels are usually taken into
account.” J.A. 143. The Griffin reference recognizes that
the composition and compressive strength of the cover-
board may vary through the addition of fillers during
manufacturing. J.A. 208. This is a simple case in the
predictable arts that does not require expertise to find
that the claimed range of “less than 6 pounds per cubic
feet” and the prior art range of “between 6lbs/ft3 and
25lbs/ft3” are so mathematically close that the examiner
properly rejected the claims as prima facie obvious. See
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(recognizing “that a prima facie case of obviousness exists
when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the
art would have expected them to have the same proper-
ties” (citing Titanium Metals, 778 F.2d at 783)); cf. Phil-
lips, 415 F.3d at 1314 (recognizing that the “ordinary
meaning of claim language as understood by a person of
ordinary skill in the art may be readily apparent even to
lay judges . . .”).
Based on the facts of this case, it is not surprising
that Appellants do not contest the factual closeness of the
two ranges. To the contrary, Appellants repeatedly
conceded before this court and the Board that there is
nothing of record to support finding a meaningful differ-
10 IN RE: BRANDT
ence between the claimed range and the range disclosed
in Griffin. Oral Arg. 4:37–4:53, http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2016-2601.mp3; J.A. 177.
Appellants also conceded that the Board correctly found
that the difference between the two ranges is “virtually
negligible.” Oral Arg. 1:39–2:04. Indeed, the insignifi-
cance of the range difference between the claims and prior
art can be gleaned from the ’858 application itself, which
discloses embodiments of coverboards having a density of
greater than 2.5 and less than 20 pounds per cubic foot.
J.A. 22, 30. We note that Brandt did not submit any
evidence of unexpected results or criticality for the Board
to consider. Appellants’ Br. 20. Taking these concessions
together, Appellants all but admit that the examiner
properly rejected Brandt’s application claims based on the
lack of difference between the prior art and the claimed
invention under Graham v. John Deere Co., 383 U.S. at
17.
Appellants posit that an examiner can only find a
prima facie case of obviousness if there is an overlap
between the claimed range and prior art range, relying on
our nonprecedential decision in In re Patel, 566 F. App’x
1005 (Fed. Cir. 2014). Appellants’ Br. 16. We disagree.
In Patel, the claims at issue were directed to a nonwoven
fabric comprised of polymer blends. 566 F. App’x at 1007.
The claims recited a first polymer blend to make up “from
26 weight percent to 80 weight percent” of the nonwoven
material, and the prior art disclosed a range for the first
polymer blend of 0.5 to 25 weight percent. Id. We vacat-
ed the Board’s finding of a prima facie case based solely
on the closeness of the prior art reference’s disclosed
range because “the ranges d[id] not overlap and the prior
art d[id] not teach that a broader range would be appro-
priate.” Id. at 1009. Patel recognized, however, that
prima facie rejections may be appropriate “where there is
a teaching in the prior art that the end points of the prior
art range are approximate, or can be flexibly applied.” Id.
IN RE: BRANDT 11
at 1010. Patel thus highlights what may be required to
find a sufficiently minor difference between a facially non-
overlapping claimed range and a prior art range such that
an examiner could prima facie reject claims. See Haynes,
8 F.3d at 1577 n.3. The nonbinding holding in Patel,
however, does not stand for the proposition advanced by
Appellants that a claimed range and prior art range must
overlap for an examiner to find a prima facie case.
Here, because the claimed range and the prior art
range abut one another, and Appellants conceded as fact
that there is no meaningful distinction between the two
ranges, substantial evidence supports the Board’s finding
that the difference in coverboard density ranges “could
not be smaller.” J.A. 5. And because Appellants did not
overcome the Board’s rejection based on the prima facie
case with persuasive argument and/or evidence, we there-
fore conclude that in this case the Board did not err by
affirming the examiner’s obviousness rejection. See
Titanium Metals, 778 F.2d at 783 (stating a prima facie
case of obviousness can be found where the ranges “are so
close that prima facie one skilled in the art would have
expected them to have the same properties”); In re Huang,
100 F.3d 135, 139 (Fed. Cir. 1996); In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,
456 (CCPA 1955).
B. Teaching Away
If a person of ordinary skill in the art reviewing a pri-
or art reference would be discouraged from pursuing the
claimed solution because the reference “suggests that the
developments flowing from its disclosures are unlikely to
produce the objective of the applicant’s invention,” the
reference is said to “teach away.” Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A prior
art reference evidences teaching away if it “criticize[s],
discredit[s], or otherwise discourage[s] the solution
12 IN RE: BRANDT
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellants argue that in finding Griffin does not
teach away from the ’858 application claims, the Board
improperly required a showing of criticality of the differ-
ence between a coverboard with a density of 6 pounds per
cubic foot and one with a lower density of 5.99 pounds per
cubic foot. Appellants’ Br. 19–20. Appellants’ theory of
teaching away is based on a “logical inference” that a
coverboard and insulation board would not have the same
density. Appellants’ Br. 20. Specifically, Appellants
contend that because Griffin discloses an insulation board
with a density of less than 6 pounds per cubic foot, to
protect the insulation board from damage, the coverboard
must be denser than 6 pounds per cubic foot. Id. Appel-
lants thus assert that Griffin teaches away from making a
coverboard with a density of less than 6 pounds per cubic
foot. Id.Appellants view Griffin too narrowly. Griffin only
suggests that a denser coverboard can serve to protect a
less dense insulation board. The ’858 application takes
the same approach as Griffin by claiming an insulation
board with a density of less than 2.5 pounds per cubic foot
and a coverboard with a density of greater than 2.5
pounds per cubic foot. J.A. 130. Griffin thus encourages
the approach taken by Brandt in the ’858 application.
As the Board concluded, we find that Appellants’
teaching away argument boils down to an assertion that
there is some criticality to having a coverboard density of
greater than 6 pounds per cubic foot. But Appellants
failed to introduce any evidence to support that argument.
J.A. 6 (“Appellants point to no evidence in the record
suggesting that one of ordinary skill in the art would have
expected a coverboard with a density of 5.99 lbs/ft3 to
have different properties than a coverboard with density
of 6.00 lbs/ft3.”). We therefore agree with the Board that
IN RE: BRANDT 13
Appellants failed to show that Griffin “criticize[s], discred-
it[s], or otherwise discourage[s] the solution claimed.” In
re Fulton, 391 F.3d at 1201.
CONCLUSION
Based on Appellants’ many concessions that there is
no meaningful difference between the prior art’s disclosed
range and the claimed range, the Board did not err in
affirming the examiner’s obviousness rejection of these
abutting ranges in this simple case. The Board’s factual
findings, including those on teaching away, underlying its
obviousness analysis are supported by substantial evi-
dence. We therefore affirm.
AFFIRMED
COSTS
No costs.