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I just read in a very old post here that "when you get into the business of claiming numerical ranges, you're asking for trouble". Is this true? If you can file without getting into numbers, should you?

One of the first questions my counsel asked me was "do you have any rough numbers?"

[TaiwanIP]

I just read in a very old post here that "when you get into the business of claiming numerical ranges, you're asking for trouble". Is this true?

In the chemical context, it is my understanding the that the novelty of an invention often resides in aspects involving numerical ranges- temperatures and pressures used in a process, various quantities recited as percentages of a composition, time constraints used in preparing a composition, etc. Even in other areas, it might very well be that the novelty of an invention is related to some type of dimension, angle, etc. (there's a well-known case involving the angle and speed of a conveyor belt used in a process but I can't locate the material I have that discusses this case).

If you can file without getting into numbers, should you?

If the novelty of your invention is unrelated to any type of numerical range, then most definitely, numbers in the claims should be avoided.

[MYK]

I just read in a very old post here that "when you get into the business of claiming numerical ranges, you're asking for trouble". Is this true?

(there's a well-known case involving the angle and speed of a conveyor belt used in a process but I can't locate the material I have that discusses this case).

Is that the (I think) paper-making machine?  It was discussed in Nolo's "Patent It Yourself".  Something about the angle of a ramp being optimum.

Metal alloys (probably falls under chemistry, but still) are another area where numerical ranges are pretty much required.

[TaiwanIP]

Is that the (I think) paper-making machine?  It was discussed in Nolo's "Patent It Yourself".  Something about the angle of a ramp being optimum.

Yes, the case I'm thinking of is related to the angle of the ramp being optimum. It's in one of the lectures that comes with the PRG patent bar exam review course, but I can't remember which one. Probably the lecture on obviousness.

[Oh, Crud]

Is that the (I think) paper-making machine?  It was discussed in Nolo's "Patent It Yourself".  Something about the angle of a ramp being optimum.

Yes, the case I'm thinking of is related to the angle of the ramp being optimum. It's in one of the lectures that comes with the PRG patent bar exam review course, but I can't remember which one. Probably the lecture on obviousness.

My (vague) recollection is this case did indeed relate to obviousness, but not so much from a standpoint of optimizing ranges.  I think it stood for the proposition that sometimes the engineer's recognition of what the actual problem was (ramp angle issue, in this case) could be the inventive thing.

[klaviernista]

I just read in a very old post here that "when you get into the business of claiming numerical ranges, you're asking for trouble". Is this true? If you can file without getting into numbers, should you?

One of the first questions my counsel asked me was "do you have any rough numbers?"

It can be tough to base an argument of non-obviousness on a range that is outside the disclosure of cited prior art.  E.g., Say you claim a composite comprising components A and B, where A is present in an amount ranging from 20-40 weight %, and B is present in an amount ranging from 60-80 weight %.  During prosecution, the Examiner cites art disclosing a composite comprising A and B in a 50/50 ratio (i.e., 50 weight % each).  The claimed invention would be novel over that prior art, but the examiner would likely argue that the optimization of the amounts of A and B would be within the skill of one of ordinary skill in the art (for innumerable reasons), and reject the claimed invention under 103(a) as being obvious.

There are many, many arguments as to why the position taken by the examiner is improper.  But the trend I have observed over the years is the success or failure of those arguments turns on whether the applicant can present data showing something beyond a mere optimization of ranges.  E.g., synergy (A+ B in the claimed amounts produces a significant jump in properties that would not be suggested by the prior art); unexpected results (A&B in the claimed amounts exhibits properties contrary to those suggested by the 50/50 composition) etc.

It is also important to claim numerical ranges in the right way.  There is quite a bit of caselaw out there construing claim terms that define ranges, so it is important to be precise when drafting claims.  E.g., "between 5 and 7" does not mean the same thing as "ranging from 5 to about 7," which does not mean the same thing as "from greater than 5 to about 7."

A final note is that numerical ranges have been frequently construed as putting concrete limitations on the scope of a claim.  This is particularly true if the range is relied upon by the applicant during prosecution in an argument favoring patentability.  This means that if you claim "about 5 to about 7" of component A, and your competitor makes a composition comprising 4 or A, chances are good that if you sue your competitor for infringement of the claim, you will lose unless you have very good evidence (e.g., a statement in the specification) indicating that the term "about" means +/- 1)