Appeal No. 95-0112
Application 07/787,994
1984). The examiner must establish that the teachings of the
applied prior art would have suggested the present method to a
person having ordinary skill in the art, and that such persons
would have had a reasonable expectation of success of preparing
said compositions. In re O’Farrell, 853 F.2d 894, 903-904, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988). This suggestion must be in
the prior art, and not in the applicant’s disclosure. In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir.
1988).
In the case before us, the examiner points to the Giessen
patent for teaching (i) metal alloy compositions which include,
inter alia, alloys which are rich in iron and contain carbide
(col. 2, lines 21-39), and (ii) that the alloys are heat treated
at temperatures between 600E and 1100E C (col. 3, line 60). We
acknowledge that alloy compositions as required by claim 1 are
members of the genus of metal alloys disclosed by Giessen and
that the temperature range disclosed by the patent touches on the
claimed temperature range, however, from a fair reading of the
patent, it is difficult for us to discern on what basis the
examiner’s conclusion of obviousness was reached.
In our opinion, the teachings of Giessen as to the use of
metal alloys having the “formula M R X , where: M is one or more
a bc
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