TAKEAWAY: Prior art disclosing a range that overlaps a claimed range does not necessarily anticipate if criticality of the claimed range can be proven. Also, if a prior art genus is small enough, it can provide an anticipating disclosure of its unmentioned species.
In Ineos USA LLC v. Berry Plastics Corp. (April 16, 2015), the Federal Circuit affirmed a district court anticipation finding. One issue in this case was whether a prior art disclosure of a range of 0.1% to 5% that overlaps the claimed range 0.05% to 0.5% would anticipate the claimed range. The Federal Circuit stated that, “the disclosure of a range [in the prior art] does not constitute a specific disclosure of the endpoints of that range,” and that while a prior art disclosure of a point within a claimed range will anticipate the claimed range, “[i]f the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges.” Here, the court found anticipation because the patentee failed to demonstrate criticality of the claimed range to the operability of the invention. Regarding a different claim recitation, the Federal Circuit found that a claimed range of 0 to 0.15% of an agent is met by a prior art reference that discloses a composition without that agent. Finally, the Federal Circuit found that anticipation can be found even when the prior art discloses only a genus, but fails to specify a claimed species of the genus. The court stated that, “[v]erbatim disclosure of a particular species is not required in every case for anticipation because disclosure of a small genus can be a disclosure of each species within the genus.”