IN RE: GREGORY A. BRANDT, JOHN B. LETTS, FIRESTONE BUILDING PRODUCTS COMPANY, LLC

Federal Circuit Summary

Before Lourie, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in the prior art and there is no evidence of a meaningful distinction between the two ranges.

The claims at issue were directed to a roof that included a coverboard with a density greater than 2.5 lbs/ft3 and less than 6 lbs/ft3.  The prior art taught a coverboard with a core layer having a density between 6 lbs/ft3and 25 lbs/ft3.  Applicant argued the Examiner did not establish a prima facie case of obviousness because the ranges abutted each other, but did not overlap.  The Board affirmed the rejection because “a prima facie rejection is properly established when the difference in the range or value is minor.”  Applicant appealed to the Federal Circuit. 

The Federal Circuit noted Applicant presented no rebuttal evidence of unexpected results or criticality.  Thus, the Federal Circuit considered only whether substantial evidence supported the prima facie obviousness case.  The Federal Circuit affirmed, holding that “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.’”

This case is: IN RE: GREGORY A. BRANDT, JOHN B. LETTS, FIRESTONE BUILDING PRODUCTS COMPANY, LLC

Written by: Adam Powell and Peter A. Hecker, Ph.D.

Edited by: Paul Stewart