Appeal No. 2004-0109
Application 09/324,549
that is, chromium, vanadium, titanium zirconium (Zr), manganese (Mn), nickel, iron (Fe),
hafnium, scandium, silver (Ag), Si and indium, may materially affect the basic and allegedly
novel characteristics of the claimed aluminum alloys with respect to being capable of attaining
the specified yield strength and fracture by any manner of method or steps thereof, when used
over certain amounts (specification, e.g., page 4, line 26, to page 5, line 5). However, except to
the extent that it is established by appellants that the disclosed and additional amounts of such
elements materially affect such basic and allegedly novel characteristics of the claimed aluminum
alloys, we find no basis in either the language of claim 19 or in the specification on which to read
the amount limitations with respect to the certain elements into claim 19. We further find no
additional disclosure in the written description of the specification which otherwise addresses
other additional elements that materially affect such basic and allegedly novel characteristics of
the claimed aluminum alloys. We note in this respect that it is appellants’ burden to establish
that any elements contained by the alloys of the Rioja references which are not specified in
appealed claim 19 would be deleterious to the basic and allegedly novel characteristics of the
aluminum alloys falling within this claim, and thus excluded from the claims by use of the
transitional term “consisting essentially of.”3 See PPG Indus., supra; Herz, supra.
Accordingly, the claimed aluminum alloys encompassed by appealed claim 19 exist
whenever the specified elements and any other permissible elements are combined in an amount
for each element permitted by the claim, with the exception of the element aluminum for which
no amount is specified, without regard to the extent to which the alloy has been worked, provided
that the alloy is capable of attaining the specified properties of yield strength and fracture
toughness. See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555-58,
3 We note here that we find no written description by any means in the specification of
aluminum alloys that consist essentially of at least the specified elements in the amounts stated
“and being substantially free of beryllium” as encompassed by appealed claim 19, and indeed,
“beryllium” per se is nowhere disclosed in the specification. While this limitation clearly raises
the issue of the compliance of claim 19 with the written description requirement of 35 U.S.C.
§ 112, first paragraph, we nonetheless address the application of the Rioja patents to this claim
under § 103(a). Cf. Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d
453 (Fed. Cir 1984). As above (see note 2), we decline to exercise our authority under 37 CFR §
1.196(b) (2003) with respect to this issue, leaving it to the examiner to address upon any further
examination of the appealed claims before the examiner.
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