Appeal No. 2003-1156
Application No. 09/745,062
references provided a motivation, incentive or suggestion for
making the required modifications as required by current law in
ACS Hospital Systems, Inc. v. Montefiore Hospital and Ex parte
Levengood" (page 2 of Request, first paragraph). In particular,
appellants maintain that "neither the Examiner nor the Board has
shown any motivation, incentive or suggestion for providing alloy
compositions having the particular combination of elements in the
narrow ranges of concentration of claim 1" (page 2 of Request,
last paragraph). However, inasmuch as it was pointed out in our
decision that prior art ranges which encompass or overlap claimed
ranges establish a prima facie case of obviousness, it is
implicit that the motivation arises from one of ordinary skill in
the art having a reasonable expectation that the claimed
combination of elements would have similar properties to the
compositions disclosed in the prior art. Moreover, appellants
acknowledge that "the examiner relied on the passage in Nomoto
(col. 6[,] lines 60 to col. 7, line 3) that nitrogen is effective
for improving the hardness and tensile strength of steel as the
motivation, incentive and suggestion for adding nitrogen to the
steels of Motomura" (page 3 of Request, second paragraph). As
for the motivation for one of ordinary skill in the art to remove
selenium from Motomura's composition, we explained in the
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