Geisler, In re

• Decision Date: 07 July 1997
• Docket Number: No. 96-1362,96-1362
• Citation: 43 USPQ2d 1362,116 F.3d 1465
• Parties: In re Michael GEISLER, Rudolf Kotter-Faulhaber, Susanne Wuerz and Michael Jung.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1465

116 F.3d 1465

43 U.S.P.Q.2d 1362

In re Michael GEISLER, Rudolf Kotter-Faulhaber, Susanne Wuerz and Michael Jung.

No. 96-1362.

United States Court of Appeals Federal Circuit.

July 7, 1997.

F. Brice Faller, Felfe & Lynch, New York City, argued, for appellants. With him on the brief was John E. Lynch.

Craig R. Kaufman, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, U.S. Department of Commerce, Arlington VA, argued, for appellee. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and David J. Ball, Jr., Associate Solicitor.

Before PLAGER, CLEVENGER and BRYSON, Circuit Judges.

BRYSON, Circuit Judge.

In this appeal from the Patent and Trademark Office Board of Patent Appeals and Interferences, the inventors challenge the decision of the patent examiner and the Board rejecting the inventors' patent claims for obviousness under 35 U.S.C. § 103. We hold that the critical factual findings underlying the Board's legal conclusion of obviousness are not clearly erroneous, and we therefore affirm.

I

The inventors, appellants Michael Geisler, Rudolf Kotter-Faulhaber, Susanne Wuerz, and Michael Jung (collectively "Geisler"), filed an application for a patent on a reflective article having a multilayer coating. After a number of the original claims were canceled, one independent claim and six dependent claims remained for examination. Claim 44, the independent claim, reads as follows:

A reflective article comprising

a substrate,

a first layer on said substrate, said layer consisting essentially of carbon and at least one element from the group consisting of O, Si, and H,

a second layer on said first layer, said second layer consisting essentially of a metal, and

a third layer on said second layer, said third layer consisting essentially of carbon and at least one element from the group consisting of O, Si, and H, said third layer being 50 to 100 Angstroms thick.

Before the examiner, the question of patentability turned on whether the claimed invention would have been obvious in light of certain prior art references or whether the claimed thickness of the third layer of the coating (also referred to as the protective layer) rendered the claimed invention nonobvious. The application included the results of wear resistance tests that the inventors ran on the protective layer of their invention. That layer is designed to protect the metallic layer from abrasion and corrosion, and thus extend the useful life of the reflective surface.

Geisler conducted two sets of tests, using what the application described as the "standard method" for testing coated surfaces for wear resistance. Geisler tested protective layers of different thicknesses ranging from 900 Angstroms to 50 Angstroms. The first test was conducted shortly after the coating process was completed, and the second test was conducted "a few days later." The first test showed that, in general, the thinner protective layers exhibited better wear resistance. The second test showed the same trend, but in that test the thinner protective layers exhibited a somewhat greater and more consistent increase in wear resistance. For example, in the first test the 50 Angstrom layer exhibited about 20 percent better wear resistance than the 300 Angstrom layer, while in the second test the 50 Angstrom layer exhibited about twice as much wear resistance as the 300 Angstrom layer. After setting forth the two sets of test results, the application concluded that a protective layer of 50 Angstroms "provides a very good protection and, moreover, is very inexpensive in its production."

The examiner rejected all seven claims on the ground that the claimed invention would have been obvious in light of two prior art patents--U.S. Patent No. 4,956,196 to Wagner et al. and U.S. Patent No. 4,085,248 to Zehender et al. The Wagner reference discloses a three-layer reflective coating on a substrate, in which the second layer is a metal and the first and third layers are a polymerizable substance, such as hexadimethylsilane. Wagner, however, does not make any disclosure with respect to the thickness of the third layer.

The Zehender patent discloses a two-layer reflective coating, and it recites that the second (or protective) layer should be sufficiently thick "to provide the protection desired and still be colourless." Those two goals would be obtained, the Zehender specification explains, for layers polymerized from hexamethyldisiloxane, "for example, in thicknesses of 10 to 60 nm [i.e., 10 to 60 nanometers, which is equal to 100 to 600 Angstroms], preferably between 20 to 30 nm [i.e., 200 to 300 Angstroms]." The Zehender specification adds that "[i]n general, for suitable protection the thickness of the protective layer should not be less than about 10 nm [i.e., 100 Angstroms]."

Focusing on the claimed thickness range for the protective layer, the examiner explained that "[t]he subject matter as a whole would have been obvious to one having skill in the art at the time the invention was made," because it would have been obvious to select the lower thickness limit of 100 Angstroms disclosed by Zehender, which is within the claimed thickness range of 50 to 100 Angstroms set forth in claim 44, the independent claim. Overlapping ranges, the examiner stated, "have been held to be a prima facie case of obviousness."

Following a final rejection, Geisler appealed to the Board of Patent Appeals and Interferences, which upheld the examiner's decision. Before the Board, Geisler argued that the Zehender reference does not render the invention unpatentable, because the invention exhibits unexpected results over the claimed range and because the Zehender reference teaches away from the invention. Geisler explained that because Zehender indicates that the protective layer should be at least 100 Angstroms thick, and preferably 200 to 300 Angstroms thick, it must be regarded as teaching away from the 50 to 100 Angstrom range recited in the application. The discovery underlying the claimed invention, according to Geisler, is that at least down to a thickness of 50 Angstroms, the protective layer is more wear resistant as it becomes thinner, a counterintuitive result. Geisler argued that Zehender suggests just the opposite, and therefore the invention would not have been obvious in light of Zehender, even though the claimed range of 50 to 100 Angstroms shares an endpoint with the 100 to 600 Angstrom range disclosed in Zehender.

The Board held that Geisler had failed to rebut the prima facie case of obviousness either "by establishing unexpected properties in the claimed range" or "by showing that the prior art in material respects teaches away from the claimed range." The Board rejected Geisler's argument that Zehender teaches away from the use of a thin protective layer in the claimed range, noting that Zehender specifically refers to the use of a protective layer 100 Angstroms thick and suggests that a somewhat thinner layer could be used effectively as well. With respect to Geisler's "unexpected results" argument, the Board concluded that one of ordinary skill in the art would not have found the wear resistance exhibited by the protective layer over the claimed range to be unexpected.

On Geisler's request for reconsideration, the Board reaffirmed its ruling. The Board explained that "one of ordinary skill in the art would have tested the range set forth by Zehender and would have perceived, as did appellants, that the thinner the coating, the more resistant, and thus the more desirable." Accordingly, the Board concluded, "we are of the opinion that [Geisler's] results are nothing more than that which would have been perceived, and as a consequence, expected by one of ordinary skill in this art in seeking optimum values within the thickness range taught by Zehender." The Board added that even if Geisler's results were considered unexpected, "it would still be questionable whether the appealed claims patentably distinguish over the prior art." The Board explained that because Zehender explicitly taught the use of a protective layer 100 Angstroms thick, Geisler's discovery "that a layer 100 thick wears better than a thicker layer would appear to constitute merely the recognition of a latent property (i.e., wearability) possessed by Zehender's 100 thick layer." The Board based its conclusion on what it described as the "well settled rule that the mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention."

Geisler took this appeal from the decision of the Board upholding the examiner's rejection.

II

The Board's decision that Geisler failed to rebut the prima facie case of obviousness is based on two findings: (1) that Geisler did not satisfy his burden of proving that the claimed protective layer produced unexpected results in the claimed thickness range of 50 to 100 Angstroms; and (2) that Geisler failed to show that the prior art of record, particularly the Zehender patent, taught away from the claimed invention. Both are findings of fact subject to the clearly erroneous standard of review. See In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451, 1455 (Fed.Cir.1997) ("An examination for unexpected results is a factual, evidentiary inquiry, which this court reviews for clear error."); In re Borden, 90 F.3d 1570, 1576, 39 USPQ2d 1524, 1527 (Fed.Cir.1996) ("The question of what the prior art teaches is a question of fact subject to review for clear error."). We conclude that neither of those two underlying findings is clearly erroneous, and we therefore uphold the Board's decision on the ultimate legal issue of obviousness.

A

At the outset, we are met by the argument by the Commissioner of Patents and Trademarks that the Board's factual findings should be reviewed under the "substantial evidence" test, not the "clearly erroneous" test that this court has traditionally...