Appeal No. 2006-0009 7
Reexamination Control No. 90/005,589
therefrom. Preferably the alloy contains . . . about 1 percent by weight tin.
The appellant argues that this passage would have suggested to one of ordinary skill in the art
that an amount of tin below one percent should be avoided. See Brief at 11-12.
We disagree. A reference is not limited to a preferred embodiment or a specific example
but rather must be considered for all that it expressly teaches and fairly suggests to one having
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
In this case, Sabol indicates that the amount of tin in the disclosed zirconium alloy may be “up
to” 1.5% and “the minimum amount present would be that sufficient to give the desired
corrosion resistance in the articles produced therefrom.” Sabol discloses that one percent tin is a
preferred amount. However, nothing in Sabol suggests that an amount of tin as low as 0.6%
would not provide the “desired corrosion resistance.” See appellant’s claim 1 (reciting 0.2% to
0.6% tin).
To the extent that the appellant is relying on certain publications attached to the
amendment after final (Paper 22) to establish that the tin concentration recited in claim 1 is not
obvious, the amendment after final was not entered by the examiner. See Advisory Action
(Paper 26). Therefore, the publications are not properly before us and will not be considered on
appeal.
For the reasons set forth above, the zirconium alloy recited in claim 1 would have been
prima facie obvious. Therefore, the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious
over Sabol is affirmed.
In claim 2, the alloy is in recrystallized state, and in claim 3, the alloy is in relaxed state.
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