Appeal No. 2002-2142 Page 11
Application No. 09/276,858
Appellants make many of the same arguments with regard to obviousness as made in
regard to anticipation. We incorporate our responses above and add the following which
additionally applies to the issue of obviousness.
With regard to the argument that Wukusick fails to recognize the problems of metallic
scale and of deleterious extraneous grain recrystallization (Brief at 11), the prior art need not
express the same reason or motivation for making the composition as Appellants to establish
unpatentability. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); see
also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.1985)(“The fact that appellant has
recognized another advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would otherwise be obvious.”)
“It is a general rule that merely discovering and claiming a new benefit of an old process cannot
render the process again patentable. While the processes encompassed by the claims are not
entirely old, the rule is applicable here to the extent that the claims and the prior art overlap.” In
re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936 (citations omitted).
Appellants quote In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966)
for the proposition that: “That which may be inherent is not necessarily known. Obviousness
cannot be predicated on what is unknown.” (Brief at 12). We quite agree. However, in the
present case, obviousness is not predicated on what is unknown. The fact that Wukusick
discloses base alloys with element concentrations encompassing and overlapping the ranges of
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007