Appeal No. 2005-0567
Application 10/280,391
Therefore, in view of the prima facie case of obviousness established over the teachings
of Sekino alone and as combined with Stalker, with Fried and with Hummel by the examiner, we
again evaluate all of the evidence of obviousness and nonobviousness based on the record as a
whole, giving due consideration to the weight of appellants’ arguments in the brief. See
generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We cannot agree with the arguments advanced by appellants with respect to the claimed
compositions specified in claims 1 through 6, 9 and 12, which involve the transitional term
“consisting essentially of” and a comparison of such claimed compositions and the heat resistant
alloys taught by Sekino at col. 2, ll. 1-11 (brief, pages 6-11). The examiner, noting the
transitional term, takes the position that “the additional elements of [Sekino] . . . do not
materially affect the novel characteristics of the inventive alloy” (answer, page 4). Thus, the
principal issue in this appeal is whether the claimed composition as encompassed by these claims
using said transitional term exclude the additional elements which either are required in or can
be present in the alloys of Sekino col. 2, ll. 1-11, and not whether such additional elements of
Sekino materially affect the basic characteristics of such alloys of Sekino. Indeed, the mere fact
that Sekino col. 2, ll. 1-11, does not disclose alloys in the exact same language used in appealed
claims 1, 6 and 12 does not, as appellants contend, constitute a “teaching away” under the
authority of In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994), and
it is well settled that applicants’ mere intent as to the scope of the claimed invention does not so
limit the scope of a claim which is otherwise definite when construed in light of the specification
as it would be interpreted by one of ordinary skill in the art. In re Cormany, 476 F.2d 998,
1000-02, 177 USPQ 450, 451-53 (CCPA 1973). Accordingly, as we set forth above (see p. 5),
appellants have the burden to establish that the additional elements contained by the alloys of
Sekino col. 2, ll. 1-11, would be deleterious to the basic and novel characteristics of the
compositions encompassed by appealed claims 1 through 6, 9 and 12, and we find no convincing
argument in this respect.
Furthermore, the differences in ranges of amounts of elements between the appealed
claims and Sekino col. 2, ll. 1-11, does not confer patentability to the claimed alloys because the
alloy compositions as a whole so claimed are either encompassed by the alloy compositions as a
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