Appeal No. 2005-0567
Application 10/280,391
In the former respect, one of ordinary skill in the art would have reasonably arrived at a
workable or even optimum range for each of the elements set forth in Sekino col. 2, ll. 1-11,
through routine experimentation, thus arriving at compositions having the properties set forth in
the reference, that are encompassed by the appealed claims, as indeed, all of the claimed
compositions in this respect fall within the alloys of Sekino col. 2, ll. 1-11. See In re Peterson,
315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003) (the claimed ranges for the alloy
elements fell within the corresponding prior art ranges: “Selecting a narrow range from within a
somewhat broader range disclosed in a prior art reference is no less obvious than identifying a
range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more compelling than in cases
of mere overlap. The normal desire of scientists or artisans to improve upon what is generally
known provides the motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages. [Citations omitted.]”); In re Aller, 220 F.2d 454, 456-58,
105 USPQ 233, 235-37 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”).
With respect to those claimed compositions which contain less than about 0.0499 weight
percent Ta and/or less than about 0.001 weight percent Zr, the claimed ranges and those of the
reference clearly have a slight overlap with respect to Ta and Zr and further a minor difference
with respect to the Ta range of claim 5. On this record, we determine that, prima facie, one of
ordinary skill in this art would have reasonably expected that such claimed compositions
encompassed by the slight overlap or the minor difference in the weight percent range for these
elements would have the same properties as the alloys of the reference which contain 0.05
weight percent Ta and 0.001 weight percent Zr. See generally, In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997), citing In re Malagari, 499 F.2d 1297, 1303,
182 USPQ 549, 553 (CCPA 1974); Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1576-77,
1577 n.3, 28 USPQ2d 1652, 1654-55, 1655 n.3 (Fed. Cir. 1993); In re Woodruff, 919 F.2d 1575,
1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); Titanium Metals Corp. of America v.
Banner, 778 F.2d 775,783, 227 USPQ 773, 779 (Fed. Cir. 1985) (“[T]he Russian article
discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and
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