Appeal No. 1997-2958 8
Application No. 08/401,719
Appellants point out that the claims set specific low content ranges for sodium and calcium
whereas Komatsubara never discloses any content of the impurities sodium and calcium. However, as
pointed out by the examiner, the claimed sodium and calcium ranges include 0%. The critical question
that must be asked here is: do the claims read on or encompass an alloy which was already known by
reason of disclosure in Komatsubara? Titanium Metals Corp. of America v. Banner, 778 F.2d 775,
780-81, 227 USPQ 773, 777-778 (Fed. Cir. 1985). When the claims explicitly include 0% levels of
a component, that component need not be present to meet the claims. In re Mochel, 470 F.2d 638,
640, 176 USPQ 194, 195 (CCPA 1972). If Komatsubara teaches a composition in which there is no
sodium or calcium, then Komatsubara teaches the composition as claimed.
We note that Komatsubara is completely silent as to the presence of sodium and calcium even
though specific amounts of other impurities are disclosed. Komatsubara does state that the alloy
composition includes incidental impurities. However, there is no evidence in the record showing that
the alloys of Komatsubara routinely contain sodium or calcium as impurities.
Komatsubara, on its face, seems to indicate that there is no sodium or calcium in the alloy.
When the prior art discloses a composition which reasonably appears to be identical or only slightly
different than a composition claimed in one of applicants’ own prior patents, a rejection under 35 U.S.
C. § 102 or § 103 is fair and acceptable. As a practical matter, the Patent Office is not equipped to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007