Appeal No. 1998-2166 Page 3
Application No. 08/572,792
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Doerner . We reverse 2
for the reasons presented in the Brief and add the following for emphasis.
OPINION
The rejections are based on the fact that Doerner and Lal each describe a range of alloy
compositions encompassing the subset of compositions recited by the claims. The Examiner reasons
that the instant target composition is therefore considered to be shown by the prior art except for the
claimed Curie temperature property limitation. The Examiner concludes that the Curie temperature is
inherently disclosed by the prior art because the claimed compositions are within the genus of alloys
described by Doerner and Lal (Answer, pages 3 and 4).
While the genera of alloy compositions described by Lal and Doerner include the subset of
compositions of the claims, that in itself does not necessarily render the claimed subset of compositions
anticipated. The description of the location of a hundred acre forest would not necessarily lead one to
a grove containing one hundred particular trees within that forest. One would not say that the grove is
described unless one could easily pick out the trees in the subset. In other words, the description must
enable one of ordinary skill in the art to find the members of the subset. Furthermore, it is not a
foregone conclusion that the identity of the subset of compositions of the claims would have been
2A rejection over Kinoshita, Kanamaru or Bourez made in the Final Rejection has been
withdrawn by the Examiner (Answer, page 3).
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