Appeal No. 2002-2142 Page 8
Application No. 09/276,858
person of ordinary skill in the art does not need to recognize that a method or structure behaves
according to a law of nature in order to fully and effectively practice the method or structure.”
EMI Group North America Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351, 60
USPQ2d 1423, 1429-30 (Fed. Cir. 2001).
Appellants also argue that the failure of Wukusick to recognize Appellants’ problems and
provide a solution thereto is apparent in the fact that Wukusick discloses a range of 0-0.07
weight % carbon. This range is listed for the base alloy of Table I. The presence of this broader
disclosure does not overcome the fact that Wukusick describes preferred and most preferred
compositions containing the required amount of carbon which would inherently result in the
reduction of scale and grain recrystallization upon casting. Cf. In re Sivaramakrishnan, 673 F.2d
1383, 1384-85, 213 USPQ 441, 442 (CCPA 1982).
Appellants additionally argue that claims 3, 6, 12, and 14 recite that the casting is
substantially free of as-cast metallic scale and that Appellants have overcome problems not
recognized and not solved by the Wukusick patent (Brief at 9). Here we focus on claim 3 as that
is the only claim of the group that we find to be anticipated. Appellants’ own specification
provides evidence that carbon levels of 0.045 (450 ppm) and above result in castings which are
essentially free of scale (Fig. 2 and specification at 11). Therefore, there is reason to believe that
the most preferred alloy composition of Wukusick, which contains 0.05 wt% carbon, would
inherently result in castings which are essentially free of scale as required by claim 3.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007