Appeal No. 2000-1031
Application No. 08/591,330
In Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227
USPQ 773, 779 (Fed. Cir. 1985), a claim recited a titanium base
alloy consisting essentially of 0.8% nickel, 0.3% molybdenum, up
to 0.1% maximum iron, and the balance titanium. A prior art
reference described two similar alloys: (i) one with 0.25%
molybdenum and 0.75% nickel; and (ii) another with 0.31%
molybdenum and 0.94% nickel. The court held (id.):
As admitted by appellee’s affidavit evidence from
James A. Hall, the Russian article discloses two
alloys having compositions very close to that of claim
3, which is 0.3% Mo and 0.8% Ni, balance titanium.
The two alloys in the prior art have 0.25% Mo-0.75% Ni
and 0.31% Mo-0.94% Ni, respectively. The proportions
are so close that prima facie one skilled in the art
would have expected them to have the same properties.
Appellee produced no evidence to rebut that prima
facie case. The specific alloy of claim 3 must
therefore be considered to have been obvious from
known alloys.
Upon return of this application to the jurisdiction of the
examiner, the appellants and the examiner should consider
whether the court’s holding in Titanium Metals is controlling on
the facts of the present case. Specifically, the appellants and
the examiner should determine whether the close structural
relationship between the preferred composition of Hughes and a
composition encompassed by appealed claim 1 gives rise to a
prima facie case of obviousness within the meaning of 35 U.S.C.
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