Appeal No. 2002-2142 Page 12
Application No. 09/276,858
the claims and further indicates that an increased concentration of carbon is desirable provides
the required basis to conclude that it would have been obvious to one of ordinary skill in the art
to formulate alloys of composition within the claimed ranges for production of single crystal
castings therefrom.
This is not to say that Appellants’ claims are unpatentable, rather, the existence of
overlapping or encompassing ranges shifts the burden to the applicants to show that their
invention would not have been obvious. Peterson, 315 F.3d at 1329, 65 USPQ2d at 1383.
Appellants do not state that they are relying upon any objective evidence for a showing of
unexpected results or other secondary considerations which would be sufficient to meet this
burden.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-20 which has not been sufficiently rebutted by
Appellants.
OTHER ISSUES
Should prosecution continue, the Examiner may wish to review U.S. Patent 5,549,765
issued to Mihalisin et al. See, in particular, column 3, lines 9-20 which describes a range of alloy
compositions fully encompassing those of claims such as claim 5. See also Tables 3, 4 and Table
11, CMSX-4 for species of alloys fully within the ranges of various claims or closely adjacent
thereto. This patent is of record (PTO-892 of Paper no. 5).
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