In Re Applied Materials, Inc.
692 F.3d 1289
Fed. Cir.2012Background
- Applied appeals four Board reexaminations affirming §103 obviousness rejections for CMP polishing pads from four patents.
- Claims cover grooves in CMP pads with specific depth, width, pitch, and perpendicular sidewalls; dimensions overlap prior art ranges.
- Prior art: Weling (grooved pads, but with smaller depths/pitches), Breivogel, and Talieh (larger/generally different groove features) with overlapping or adjustable ranges.
- Board found dimensions are result-effective variables and that optimization within the claimed ranges would be within ordinary skill in the art.
- Evidence of unexpected results and commercial success were insufficient to overcome the prima facie obviousness finding.
- Applied sought rehearing; denied; consolidated appeals; court affirms citing substantial evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board’s obviousness ruling is supported by substantial evidence | Applied argues dimensions were not taught or implied as result-effective by prior art. | Board reasoned overlapping ranges and result-effectiveness render the claims obvious. | Yes; Board supported by substantial evidence. |
| Whether the dimensions are shown as result-effective variables | Applied contends prior art did not reveal the impact of each dimension or the result of optimization. | Breivogel and examiner show width/pitch/depth affect polishing rate and uniformity; optimization within ordinary skill. | Yes; dimensions are result-effective variables. |
| Whether Weling teaches away or simply discloses shallower grooves | Weling teaches away from deeper/grooved configurations claimed by Applied. | Weling does not teach away; alternative interpretations exist but evidence supports Board’s conclusion. | Supported; no teaching away reversing obviousness. |
| Whether commercial success and nexus support non-obviousness | Applied shows market success with its pad versus Weling pad. | Best known methods and lack of sales data fail to prove nexus; evidence insufficient to overcome obviousness. | No; insufficient nexus and data to overcome prima facie obviousness. |
| Whether combination of references and multiple result-effective variables renders the invention obvious | Combining different groove features would not be obvious; interplay of variables could be unpredictable. | Combining Breivogel, Weling, and Talieh with overlapping ranges was within routine optimization. | Yes; combination deemed obvious. |
Key Cases Cited
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (obviousness requires factual inquiries and de novo/legal review)
- Para-Ordnance Mfg., Inc. v. SGS Imps. Int'l Inc., 73 F.3d 1085 (Fed. Cir. 1995) (multiple factual inquiries underpin obviousness)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial evidence standard and standard of review)
- SEC v. Chenery Corp., 332 U.S. 194 (1947) (agency decision should be upheld only on the grounds relied upon)
- Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281 (1974) (agency path may be discerned even if not clearly stated)
- In re Huston, 308 F.3d 1267 (Fed. Cir. 2002) (cryptic but discernible agency reasoning can be upheld)
- In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003) (ranges overlapping prior art can support obviousness)
- In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997) (overlap of ranges supports motivation to optimize)
- In re Aller, 220 F.2d 454 (CCPA 1955) (optimization of a claimed variable within disclosed conditions is often obvious)
- In re Antonie, 559 F.2d 618 (CCPA 1977) (unknown relationship disclosure can still render result-effective variables obvious)
- In re Yates, 663 F.2d 1054 (CCPA 1981) (prior art must disclose relationship between variable and result)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (common sense and predictable variation in optimization)
- Dickinson v. Zurko, 527 U.S. 150 (1999) (APA meaningful review of agency factfinding)
- Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985) (secondary considerations can be probative evidence)
- Huang, 100 F.3d 135 (Fed. Cir. 1996) (sales data and market factors weighed for commercial success)