Appeal No. 2002-0250 Page 6
Application No. 08/930,771
(Fed. Cir. 1985)(concluding that a claim directed to an alloy containing “0.8% nickel, 0.3%
molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie
obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum,
balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium).
Here, the compositional ranges of the claim surround the prior art range. In such a
situation, one of ordinary skill in the art would have expected compositions with ratios within the
claimed ranges to have the same or similar properties as compositions with ratios within the prior
art range. See Titanium Metals, 778 F.2d at 783, 227 USPQ at 779. We conclude that the
Examiner has established a prima facie case of unpatentability with respect to the subject matter
of claim which has not been sufficiently rebutted by Appellants.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1, 3-13, 15-17, and 19 under
35 U.S.C. § 103(a) is affirmed and to reject claims 3-5 and 19 under 35 U.S.C. § 112, ¶ 2, is
reversed.
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